On July 14, 2021 the Bulgarian Supreme Administrative Court (SAC) dismissed the appeal of VOLVO Trademark Holding AB (hereinafter – Volvo) against the decision of the Sofia Administrative Court which confirmed the opposition decision of the Bulgarian PTO which found no likelihood of confusion between the earlier trade mark VOLVO and the trade mark application for the combination trade mark VALVO (Decision № 8544 from 14.07.2021 on Administrative Case№ 1884/2021 Г., VІІ Department SAC).
In 2015 the Bulgarian company VALVO EOOD (hereinafter – VALVO) filed an application with the Bulgarian PTO for the registration of combination trade mark for classes 06, 11, 17 and 35
In 2016 VOLVO Trademark Holding AB filed an opposition against the application before the Bulgarian PTO on the basis of the earlier trade marks:
EUTM 010397016 VOLVO, combined for classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27, 28, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 45
IR № 1274024, VOLVO, combined for classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27, 28, 35, 36, 37, 38, 39, 40, 41 and 42 covering the territory of EC.
The Opposition Division of the Bulgarian PTO rejected the opposition as unfounded for all goods and services. The Opposition Division found that the goods and services were identical and/or similar. Visual similarity was found to be of a low degree. The conclusion was based on the high stylization of the application, the colours red and blue, the shape of the letter “O” which has more of a circle shape rather than an oval shape as in the case of the later trade marks as well as the symmetry inversion present between the letters V and Ʌ which suggests that there is also a graphic representation of the sign. The earlier trade marks are written in a font close to the standard one whereby the earlier IR also has a graphic silver element in the shape of a circle in which there is the word element VOLVO. Additionally, the beginning of the word elements “VAL” and “VOL” is appreciably different which leads to a conclusion only for a medium degree of phonetic similarity despite the fact that four out of the five sounds of the compared trade marks coincides. Furthermore, the trade marks do not have a particular meaning. Therefore, the Opposition Division found that there is no conceptual similarity. Moreover, the opponent did not succeed in proving distinctive character. In analyzing the grounds for likelihood of confusion the Opposition Division stated that the visual similarity in the present case is of highest significance. Considering that the goods are offered in an environment without noise, in specialized shops, websites, catalogues and that there is a low degree of visual similarity, the Opposition Division found that there is no likelihood of confusion in the present case.
Following the appeal of Volvo the Dispute Department of the Bulgarian PTO confirmed the decision of the Opposition Division. Volvo appealed the Dispute’s Department decision before the Sofia Administrative Court whose decision rejected Volvo’s appeal.
Subsequently, Volvo appealed the Sofia Administrative Court’s decision before the final instance court – Supreme Administrative Court. After reviewing the facts of the case SAC found that there is a high degree of phonetic similarity between the trade marks which is due to a single difference of the letter(sound) “A” in the attacked trade mark. However, since all three trade marks are combined, SAC stated that the decisive factor is the visual impression the trade marks leave behind. In this aspect SAC stated that the trade marks are visually different. This finding was based largely on the stylization of the later trade mark, its font, colours. It was stated that the stylization of the letter “A” represents an emphasis on the different letter and suffices to distinguish the compared trade marks as it points the attention of the consumers to the difference between them. SAC stated that there is no conceptual similarity between the trade marks.
In analyzing whether there is a likelihood of confusion in the present case SAC went on to state that phonetic similarity alone can justify a finding for likelihood of confusion provided the goods and/or services are ordered predominantly orally. In the present case the goods and/or services are specific, used by specialized in the technology field enterprises and rarely bought by the average consumer directly. Additionally, the nature of the majority of goods require prior consulting with a specialist who will lead them to a certain product or trade mark. Alternatively, a product or a trade mark can be selected on site at the time of purchase. Since the attention of the consumer will be increased in view of the unknown to him field and product line, the likelihood of confusion decreases proportionally. There is also no likelihood of association as the earlier trade mark VOLVO has a distinctive character with regard to the production of automobiles and the connected with them services. The Bulgarian consumer is relatively well-informed and circumspect but he is not familiar with other products other than automobiles produced by VOLVO. Additionally, the purchase of such goods is rear which increases the attention of the consumer and respectively decreases the likelihood of confusion.
In view of the above SAC concluded that taking into account the degree of attention the average consumer will pay to the goods in the contested classes in combination with the lack of distinctiveness of the earlier trade marks in conjunction with the respective goods and services, the low degree of visual similarity and lack of conceptual similarity exclude the likelihood of association between the goods bearing the trade marks VALVO and VOLVO. SAC further opined that the identity and/or similarity of the goods and services of the compared trade marks does not outweigh the differences between the trade marks as for this to be a valid argument likelihood of confusion needs to be present which in the present case is not present.
For all of the above reasoning SAC rejected the appeal of VOLVO and ordered VOLVO to bear the attorney fees of the trade mark applicant VALVO EOOD. The decision is final and not subject to an appeal.
Author: Iana Roueva Madey
Source: Supreme Administrative Court