Bulgaria Court Rules against German Retailer Lidl in Trademark Cancellation Procedure

On June 26, 2012, the Administrative Court Sofia City (ACSC) revoked the Bulgarian Patent Office’s (BPO) decision to cancel the word mark ОПТИСАЛ (OPTISAL), for goods in IC 5 (pharmaceuticals to restore electrolyte balance, nutritional products to restore salt balance for medical purposes, dietetic substances for medical purposes), owned by the Bulgarian manufacturer of medical products KENDI ODD.

The BPO cancellation decision was based on prior European Community Trademarks (CTMs) Optisana and OPTISANA, registered for similar goods in IC 5 by the major German retailer Lidl Stiftung & Co. KG (Lidl).

However, the ACSC ruled that the marks are not visually, phonetically and conceptually similar to the extent that could produce a likelihood of confusion among consumers. According to the ACSC, the distinctiveness of the marks is based on the endings “SANA” and “SAL”. The common element “OPTI” is considered to be non-distinctive due to its popularity and regular use and the fact that numerous marks begin with the word mark “OPTI”.

The nature of the goods in IC 5 was also taken into account. The ACSC ruled that pharmaceutical goods require higher attention on the part of the consumers and that a likelihood of confusion cannot be claimed.

The decision is subject to appeal before Bulgaria’s Supreme Administrative Court (SAC) within 14 days after its publication.

Prepared by: Elena Marinova

For more information, please contact Elena Marinova at our Bulgaria office.

Source: Administrative Court – Sofia City (ACSC)