Albanian IPO Establishes Likelihood of Association in Recent PUNK v. BLACK PUNK Case

In an opposition proceeding held in April 2017, the Albanian IPO’s Appeal Board found the ‘BLACK PUNK’ and ‘PUNK’ trademarks confusingly similar and established likelihood of confusion, including likelihood of association. While the likelihood of confusion concept exists in Albanian practice, it has been established in very few cases, making the IPO’s decision in this case an impressive development for Albania’s modest IP case law.

Factual Background

The opponent, PDM Parthian Distributer & Marketing Adviser GmbH, distribution and consulting firm based in Germany, is the owner of international registration No.1230659 for the ‘BLACK PUNK’ mark (plain block letters), covering Albania since April 2014 and registered, among others, under class 32 for the following goods: “beers; mineral and aerated waters and other non-alcoholic beverages, including non-alcoholic energy drinks; vitamin-containing beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages”.

The applicant, multinational brewery Brewdog Plc, based in Scotland, UK applied in December 2015 for international registration No.1285220 for the ‘PUNK’ trademark (plain block letters) under class 32 for the goods “beer, lager”, also covering Albania.

In April 2016, PDM lodged an opposition based on its earlier ‘BLACK PUNK’ mark relying on the grounds of likelihood of association. PDM claimed that the opposed mark could lead the public to believe that both marks are part of a series of trademarks, and that the designated products could therefore have the same, or connected, commercial sources. Brewdog responded to this opposition, but in April 2017, the Albanian IPO’s Appeal Board found the marks confusingly similar and established likelihood of association.

Albanian IPO’s Findings

The Appeal Board’s reasoning includes interesting considerations on different trademark-related issues, some of which constitute a new approach in Albania. The Appeal Board based its decision on the following grounds:

• The goods in Class 32 designated in the contested trademark application and in the earlier trademark are identical.
• The goods at issue are aimed at the general public and the level of attention is relatively low, significantly affecting the likelihood of confusion.
• The distinctive character of the opposing mark relies on the verbal element ‘PUNK’ because ‘BLACK’ is a weak element. ‘BLACK’ is a basic word in English whose meaning Albanian consumers presumably understand and it describes a characteristic of the goods, considering that one of the characteristics of beer is its color.
• Because the distinctive character of both marks relies on the verbal element ‘PUNK’, the degree of visual similarity is high.
• No meaning is attributed to the word element ‘PUNK’, even though it has a meaning in English. This is not a basic word in English, and although Albanian consumers have a relatively good knowledge of the language, they are not believed to be familiar with this word.
• Because the marks do not convey any meaning to Albanian consumers, the conceptual aspect does not influence the assessment of the similarity of the signs.
• The marks are phonetically similar. ‘BLACK’ is comprised of silent consonants and vowels and goes unnoticed; what is stressed is ‘PUNK’, the word that both marks contain.
• Finally, and most importantly, the Appeal Board noted that the trademarks could lead the public to regard them as part of a family of trademarks or trademark series, which could in turn lead consumers to assume that the marks have the same commercial origin, resulting in likelihood of association.

Analysis

The Appeal Board’s reasoning and its global assessment of various factors in this case diverges from standard practice in Albania. As a first step, they determined the degree of similarity and established the criteria under which comparisons should be evaluated. As a second step, they conducted a global assessment taking into account the interdependence of multiple factors.

This approach is in line with EUIPO’s methodology leading to comprehensive conclusions on likelihood of confusion. Unfortunately, this approach was sporadically followed by the Albanian IPO in the past. Instead of first stablishing the degree of similarity and subsequently making a global assesment, the Albanian IPO usually mixed these steps and conducted incomplete and inconsistent analysis. For example, after analyzing visual similarities, the IPO would reach the conclusion that these similarities were enough to establish likelihood of confusion, without examining other factors such as the level of attention of the relevant public or whether the goods were identical/similar/dissimilar.

Secondly, the Appeal Board had interesting arguments regarding whether or not a mark conveys a meaning to the consumers, e.g. it did not attribute any meaning to the word element ‘PUNK’ because the fact that this word is in the English dictionary is not in itself sufficient to conclude that it conveys a meaning to consumers whose mother tongue is not English.

Another interesting argument is the evaluation of the word ‘BLACK’, found to be a weak element not because it conveys a meaning but because it describes the characteristic of the goods. This is relevant because the distinctiveness of the mark is closely related to the goods/services the mark intends to cover and not to the meaning of the word in itself. This however differs from standard practice in Albania, which automatically defined as descriptive any word that has a meaning regardless of the goods or services it covers.

Finally, even though the dispute did not actually involve a family of marks but was based on a single mark, the Appeal Board went beyond that and introduced definitions for likelihood of association and family of marks. According to the Board, there is likelihood of association when consumers assume the “same commercial origin” of the goods. Also, for the public to assume that there is a family of marks, the common denominator must have a distinctive character.

The Appeal Board’s reasoning and methodology was influenced by EUIPO’s practice probably because the opponent was persistent in putting forward relevant arguments and case law. This highlights the need for Albanian IP professionals to put more pressure on Albanian authorities to implement EU case law when examining similar cases. At times the Albanian practice is in line with EU case law, but there are still many inflexible rulings. A sustained effort of Albanian IP professionals will likely help align local practice with that of the EU.

By: Irma Cami

For more information, please contact Irma Cami at our Albania office.