Bulgarian PTO Rejects Deutsche Telekom’s Opposition

On October 16, 2014, the Disputes Department of the Bulgarian Patent Office (BPO) rejected the opposition brought by Deutsche Telekom AG, the largest telecommunication company in Germany, against application no. 113736, IC 35, 38 and 42, for the figurative trademark Global Net Solutions, filed by the Bulgarian competitor Global Net Solutions.

The BPO Disputes Department reversed the earlier decision of the BPO’s examining division, which rejected the Bulgarian company’s figurative trademark application on the basis of an earlier Magenta colour mark, Deutsche Telekom AG’s Community Trademark no. 212787 in IC 38 and 42.

The Disputes Department carried out a two-step analysis to assess the similarity of the marks. It first determined the role of the colour in forming the overall impression and, secondly, compared the colours of both marks.

Considering that the earlier mark was a single-colour mark, the BPO Disputes Department panel held that only a visual comparison between the marks was possible and that such comparison should focus on establishing if the magenta colour is actually present in the later mark and the extent to which that colour contributes to the overall impression of the mark. The panel took into consideration that consumers do not usually perceive colours as indicators of origin of goods or services. Therefore, in order to find the marks similar, the colour should form a significant part of the design and visually dominate the other components of the later mark.

The panel assessed that the colours in the later application (red and blue) only supplement the verbal and figurative components, while the earlier mark is represented by a single colour, which is its only distinctive feature. Therefore, in terms of the overall impression, the marks cannot be deemed visually similar, i.e. the consumers would remember the later mark by its dominant verbal element “Global Net”, whereas the earlier mark will be perceived entirely as a colour.

The panel further based its reasoning on the finding that the marks contain different colours. According to the colour specification of the later application, it contains red and blue colours on white background. In contrast, the earlier mark is described as magenta or telemagenta. The panel found that these colours cover different colour categories. The Global Net Solutions mark has two primary colours (red and blue), whereas the earlier mark has a secondary colour, which belongs to a different group of violet colours, according to the RAL colour system.

Because of the lack of similarity between the marks, the panel concluded that there is no likelihood of confusion among the consumers. The decision was not appealed further and entered into force three months after it was issued.

By: Dimitar Batakliev

For more information, please contact Dimitar Batakliev at our Bulgaria office.