INTA's Trademark Reporter Albania case summary - Similarity of Marks (Motorex vs MoTex)

By Irma Cami, published in the March/April 2012 edition of the IAR Trademark Reporter

The Swiss company Bucher AG Langenthal is the holder of the word mark MOTOREX (IR No. 635100, registered in Class 4), which has been designated in Albania since February 4, 1998. The Albanian company KAPPAOIL is the holder of the national registration for the MoTEX mark (word & device) (No. 11889, registered Sept. 10, 2007, in Class 4). The two companies were involved in a litigation before the First Instance Court of Tirana, which was concluded in April 2011 with Decision No. 3035 of April 18, 2011. The plaintiff, Bucher AG Langenthal, sought the cancellation of the defendant’s mark on the ground of a prior mark and the likelihood of confusion caused by the existence of the two marks.

For the purpose of proving likelihood of confusion, the plaintiff cited the criteria established by the Court of Justice of the European Union (CJEU), arguing that Albanian law has entirely transposed the Council Directive 89/104/EEC of December 21, 1988, which is why the CJEU’s rulings should apply to such cases. The plaintiff also provided the court with an analysis of the likelihood of confusion by emphasizing the marks’ phonetic and visual similarities, as well as the identity of the goods covered by the marks.

The defendant objected, arguing that the plaintiff did not prove the likelihood of confusion because no reduction of sales was proven nor was an expert appointed to estimate the likelihood of confusion.

The court focused its arguments on issues such as what criteria should be used to estimate the likelihood of confusion and whether the two marks were identical to the extent that a likelihood of confusion would be created. The court ruled that there was a likelihood of confusion.

What makes this decision particularly important is that the Albanian court recognized the CJEU rulings as authoritative sources of national legislation. This position is a remarkable step forward in Albanian practice, considering that until recently the court focused its judgment regarding likelihood of confusion entirely on an expert’s opinion.