Repsol Victorious In Trademark Opposition Case Against Turkish Competitor

In November 2014, the Albanian PTO Appeal Board ruled in favor of Repsol S.A., an integrated global energy company based in Madrid, Spain, in a trademark opposition case against Turkish energy company REKSOİL PETROKİMYA SANAYİ VE TİCARET ANONİM ŞİRKETİ that applied for international registration (IR) 1171174 for REXOIL trademark (word and device).

Repsol based the opposition on its earlier international registrations for REPSOL mark (word and device) designating Albania, namely IR 982529 and IR 1146022, both registered inter alia in IC 4.

The Turkish company applied to register IR 1171174 for REXOIL mark (word and device) in IC 4 only. Repsol filed an opposition on the ground that the similarities between the marks in dispute would inevitably cause the likelihood of confusion.

To prove the likelihood of confusion, the opponent provided the Appeal Board with a comprehensive analysis, emphasizing the phonetic and visual similarities, as well as the identity of the goods. In its analysis, the opponent relied on various rulings established by the EU authorities, and urged the Appeal Board to consider them while analyzing this particular case, emphasizing that the Albanian legislation has fully transposed the Council Directive 89/104/EEC of 21 December 1988, which is indeed true.

The applicant replied to the opposition, arguing that the co-existence of the marks would not cause the likelihood of confusion.

The Albanian PTO Appeal Board recently decided in favour of the opponent, after assessing that the disputed marks cover identical goods and that there is a considerable degree of visual and phonetic similarity.

According to the Board of Appeal, when we take into account that in the majority of cases the consumers do not see the two brands simultaneously, it should be assumed that the recently seen brand must contrast with the more or less faded memory of the previously seen brand – and, it this particular case, the marks are similar enough to establish the likelihood of confusion.
The decision has not become final yet, as the time limit to appeal has not elapsed.

By: Irma Cami

For more information, please contact Irma Cami at our Albania office.