INTA's Trademark Reporter Macedonia case summary - Famous and Well-Known Marks (PayPal vs PEJ PLUS)

Feb 6 2013 - 16:51

By Zivka Kostovska-Stojkovska, published in the March/April 2012 edition of the IAR Trademark Reporter

On May 5, 2011, the SOIP refused the Macedonian trademark application for PAYPAL (TM 2007/1149) in Class 9 (magnetic cards, readers, informatics) and in Class 38 (telecommunications), applied for by PEJ PLUS, a Macedonian company that, among other things, handles processing and distribution of electronic transactions.

The opponent, PayPal, Inc., a United States company, is a world-known provider of secure payments on the Internet that enables users to pay, send money, and accept payments without revealing their financial information. On November 28, 2008, PayPal filed an opposition against the application for national registration of the mark PAYPAL filed by PEJ PLUS. The opponent, who did not own a national trademark in Macedonia, argued that it was the owner of a worldwide family of trademark registrations for PayPal in Classes 9, 14, 21, 25, 36, 38, and 45, and that they were present on many websites that were popular among the relevant Macedonian public. For this reason, the opponent argued that his trademarks should be considered prior registered trademarks in Macedonia within the scope of Article 6bis of the Paris Convention and Article 16(3) of the TRIPS Agreement. The opponent also argued that they had prior rights from their trade name within the scope of Article 8 of the Paris Convention.

The opponent asserted that the existence of the identical Macedonian mark PAYPAL for Classes 9 and 38 would represent unfair competition and would harm the reputation and the wellknown status of the prior PayPal family of marks, thus misleading consumers.

The defendant did not respond to the arguments presented in the opposition notice.

After examining the legal grounds for the opposition and the evidence provided, the SOIP established that the opponent had a legitimate legal interest in filing the opposition and that PayPal’s mark should be considered prior marks with respect to the opposed trademark application PAYPAL. Based on the evidence, the SOIP concluded that the opponent’s trademark was a well-known trademark in the territory of the Republic of Macedonia, considering awareness, recognition, image, overall appearance, and identification among consumers. Based on these facts, the SOIP ruled that the opponent’s PAYPAL mark was a well-known trademark according to Article 6bis of the Paris Convention, and, as such, enjoyed special protection.

In its ruling, the SOIP concluded that both trademarks were indisputably identical (both phonetically and visually), and were intended for the same classes of goods and services, as a result of which the opposed trademark application PAYPAL could not be granted protection and should be refused.

This decision of the SOIP is an important decision with respect to the protection of well-known trademarks in the territory of the Republic of Macedonia and will serve as a precedent, both for the officials involved in the protection of IP and for the local business community in their future decision-making processes.

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