Pavlov & Co

SUPREME ADMINISTRATIVE COURT UPHOLDS DECISION FOR INVALIDATION OF A 3D TRADEMARK, ISSUED BY THE BPO

The case began with a request before the Bulgarian Patent Office (BPO) by the local subsidiary of a large international pharmaceutical company, represented by Vasil Pavlov, for invalidation of a 3D trademark, owned by a competitor, for goods in class 01 and 05 of the ICGS. The request was based on 3 earlier figurative trademarks, owned by the claimant, that represent rectangular grids of small figurative elements (circles or hexagons). A highly similar element – a rectangular grid of small circles was present on 2 sides of the 3D trademark of the defendant (which is in fact a rectangular box for a medicine – the figurative element is present on the right side of each of the 2 large sides of the box). The claimant pretend that this figurative element was the dominant and distinctive element in the 3D trademark, since the shape itself is a plain, familiar rectangular box-shape which is widely used by virtually all medicine manufacturers for decades, and the word elements on the packaging are non-distinctive – they only provide information about the product, as well as the company name of the producer and the name of the product (the name coincide with the name of the active substance itself) – both of which are mandatory for all medicines according to the law. Therefore, the dominant elements of both the 3D mark and the earlier figurative marks are highly similar and can lead to confusion on behalf of the relevant public.

The BPO accepted these arguments and issued a decision for invalidation of the 3D trademark.

The BPO decision was appealed by the defendant, claiming that the trademarks were not similar. The 3D trademark included the name of the medicine, the name of the producer and his logo, embedded in the grid-like element. All of those elements would clearly distinguish it in the eyes of the consumer. On top, it was a 3D mark and that fact could not be disregarded.

The Sofia City Administrative Court (SCAC) ruled in favor of the claimant (the owner of canceled 3D trademark). The Court based its decision on the opinion of one of the 3 experts that had a conclusion on the similarity of the marks. That expert stated that the earlier trademarks were “samples of a pattern” of a grid, made from small circles or hexagons. The figurative element in the 3D mark was simply a rectangle made up from a grid-like placement of circles and it differed enough from the earlier signs, coupled with the logo of the producer and the word element on the mark.

That decision was appealed by the BPO and the owner of the earlier trademarks before the Supreme Administrative Court (SAC). That Court stated that the findings of the SCAC were wrong. The SAC supported the conclusion of the majority of the experts, that the trademarks were similar, due to the high degree of similarity between the earlier signs and the figurative element used in the 3D mark. The word elements and the logo did not change that perception, since these elements are not distinctive. There was also a common concept in the creation of the marks that created a similar overall visual impact. In addition, the major word element indicated the active substance of the medication and it cannot identify the product as a trademark, so it should be completely disregarded.

The highly similar figurative element defined the similarity between the 3D trademark and the earlier rights and could lead to confusion on behalf of the consumers about the trade origin of the products. Therefore the SAC ruled that the decision of the SCAC was incorrect and overruled it, confirming the decision of the BPO for invalidation of the 3D mark of the defendant.