Pavlov & Co

EXPERT OPINIONS PLAY A BIG PART IN COURT'S DECISIONS, BUT JUDGES DO NOT FOLLOW THEM BLINDLY

It is all the more often, especially in IP matters cases, where judges would rely heavily on the opinions of experts in the field when solving cases. However, expert opinions can be disregarded by the court if they can be convincingly disputed.

This happened in a case for invalidation of a registered industrial design of a flint lighter filed by a local company. A request for invalidation was filed by Societe BIC - France, represented by Vasil Pavlov, based on the International Registration of the world-renown BIC flint lighter as a 3D trademark. Both lighters were quite similar, with the only real difference between them being that the BIC lighter had an elliptical shape of the gas container (that was essentially the body of the lighter itself), while the contested design had a tear-drop shaped gas-container (again, that was the body of the lighter).

The Bulgarian Patent Office (BPO) concluded that the design was identical to the earlier 3D mark, since their specific features differ in immaterial details only. Both the elliptical and the tear-drop shape of the bodies were very similar (both being an oval shape) which leads to a lack of novelty of the registered design.

The decision of the BPO was appealed before the Sofia City Court (SCC), Administrative section. The appelant claimed that the tear-drop shape was clearly different from the regular elliptical shape of the earlier lighter and it creatd a clearly different overall look, that was even coupled by other diverse elements of the lighters (including a beveled encryption of the producer logo on the contested design). BIC contested these claims and supported its position from the administrative phase. The case came down to an expert conclusion for the similarities between the two shapes. The expert stated that there were enough differences between the two shapes so that they did create a different overall impression, so the contested design differed in appearance from the earlier 3D trademark. That conclusion was contested and a triple expert examination was ordered by the court. The experts were divided - 2 of them claimed that the shapes were not similar enough, citing multiple differences (although - highly unconvincingly), mainly the shape of the body and the inscription, while the third expert clearly stated that the shapes were similar, since the inscription was to be disregarded when comparing shapes and the fact that the tear-drop shape was also an oval shape, just as the plain elliptical shape and given the size, dimensions and type of product, this difference was insignificant. Another triple conclusion was appointed with more questions to answer, in hopes of clarifying the situation, but the experts were again split in the same relation - 2 in favor of the dissimilarity and one in favor of the similarity between the lighters. Based on those findings, the SCC ruled that the decision of the BPO is to be overturned, since the shapes did not creat the same overall impression and the design should not be invalidated.

The decision was appealed by BIC and BPO before the Supreme Administrative Court (SAC) with basically the same arguements. A big emphasys was put on the experts opinions, citing glaring contradictions within them (for example, different experts would list different elements of the lighters as "different"). A big stress was put on the type of the product, its usual size and way it was displayed, the relevant consumer and the low price of the product that clearly meant that there wasn't a great deal of attention paid when making a purchase. Finally, two lighters (one of each type) were shown to the Court in an open court session, for it to be able to assess the similarity first hand.

The perseverance of Mr. Pavlov paid off, as the SAC concluded that the two shapes were similar. It stated that the opinion of the majority of the experts was not well supported and was full of controversy. The shapes did appear similar, even as regards to the shape of the gas balloons (bodies). The other elements were small and the differences between them (if any) did not contribute to making the overall appearance of the two lighters different. Therefore, despite the opinion of the majority of the experts, the SAC overruled the decision of the SCC and upheld the decision of the BPO for invalidation of the contested design.