INTA's Trademark Reporter Romania case summary - Similarity of Goods or Services (Go Fast vs Go Fast Energy Drink)

By Aura Campeanu, published in the March/April 2012 edition of the IAR Trademark Reporter

On April 21, 2011, the Romanian Office for Inventions and Trademarks (ROIT) rendered a decision on the opposition filed by Go Fast Sports & Beverage Company against the extension to Romania of protection for its international trademark GO FAST SPORTS ENERGY DRINK, registered in the name of Dr. Martin W. Duppenthaler of Switzerland (IR No. 967609, registered Sept. 5, 2008). The ROIT refused registration for all goods in Classes 25 and 32 and all services in Class 35.

The opposition notice was based on the likelihood of confusion with the opponent’s prior rights, namely its CTM registrations for the word mark GO FAST. (CTM No. 003060258, registered Jan. 17, 2005, for goods in Classes 25 and 28; CTM No. 002267029, registered Nov. 8, 2002, for goods in Class 32.)

The opponent argued that not only were the trademarks in question highly similar, but there was also a direct conflict with the goods in Class 25 of CTM No. 003060258 and Class 32 of CTM No. 002267029. For these reasons, the ROIT concluded that a likelihood of confusion existed with respect to the goods in Classes 25 and 32.

The opponent argued that because Class 35 covers, among other things, general retail services and the manufacture of goods that are intended to be put on the market, the services in Class 35 covered by the opposed International Registration were closely connected to the goods in the conflicting Classes 25 and 32. Consequently, a likelihood of confusion for Class 35 existed as well, and the Romanian designation of IR No. 967609 must also be rejected for the services in Class 35.

The ROIT agreed with the opponent’s arguments and accepted that services in Class 35 were closely connected with the goods in Classes 25 and 32, for which the earlier marks were registered. The ROIT therefore rejected the application in its entirety. Specifically, the ROIT stated in its decision that, “because the goods in Classes 25 and 32, for which the respective trademarks are registered, are similar and the services in Class 35 are complementary with the list of goods the trademarks were registered for, there is likelihood of confusion” (emphasis added).

This decision constitutes valuable national case law, as it provides a precedent with respect to complementary services as they may relate to Class 35. The decision in question could be used in future disputes between, on the one hand, trademarks covering only goods and, on the other hand, trademarks covering both goods and complementary services in Class 35.