Commercial identity

I. Preamble

Observing the evolving trends of the economic market, we can say that at this moment, a strong brand identity leads to the shaping of a segment of loyal customers, favoring the increase of profit.

However, in order for one to attain the stature of being distinctive, it requires continuous checks in the public registers regarding the trademarks,  an active attitude to any threats to them.

In the following, we will briefly present the main ways to protect the rights of the trademark holder/applicant.

II. OSIM filter

Before discussing how third parties can intervene either in the process of registering a trademark, in order to stop this process or post factum in order to eliminate a registered trademark, we will briefly present the means that OSIM has at its disposal, in its capacity as a monitoring authority in the field.

Thus, first of all, without referring to other previous intellectual property rights, there are a number of requirements that a trademark must comply with in order to officially register it, which we find in article 5 of Law 84/1998 on trademarks and geographical indications.

For example, trademarks that are devoid of the distinctive character or which consist exclusively of signs or indications which have become common in everyday language or commercial practice will be refused for registration.

However, distinctiveness is examined in the light of all the elements of the mark, viewed as a whole and not individually, as held by the Court of Justice of the European Union in the case C-408/08  Lancôme perfume:  As regards a  complex mark, as is the case here,  the assessment of its character distinctive cannot be limited to an analysis of each of its terms or its elements,    taken separately, but must be based,   in any event, on the perception of the general public concerned on that mark,  and not on the presumption that the elements which, separately, do not have distinctive character cannot have such a  character after combining them. Thus, the mere fact that each of those elements,  taken separately,   lacks any distinctive character does not preclude the possibility that the result of their combination may have such a  character.

Refusal of registration extends to reports which are likely to mislead the public, for example as to the geographical origin, quality, or nature of the product or service.

Marks containing signs of symbolic, religious value are also prohibited. For the use of reproductions or imitations of coats of arms, flags, state emblems, insignia, official seals of control, and guarantee, it is required for prior authorization, under the sanction of refusal to register.

At the same time, OSIM also carries out preliminary checks in this procedure of filtering the marks, regarding the existence of previously identified or similar marks, in order to avoid overlap.

However, the lack of distinctiveness or use of common terms may not give reasons for refusal or cancellation if before the filing date of the application for registration or before the filing date of the application for cancellation, the mark has acquired a distinctive character as a result of the use.

In any case, we note here that any OSIM decision on trademark applications can be challenged within 30 days administratively before this authority. Subsequently, there is a judicial appeal before the Bucharest Tribunal.

III. Opposition

3.1. Conditions

In the preliminary stage, any interested person, including the proprietor of an earlier trademark, may lodge an opposition to the registration of a trademark, within 2 months from the date of publication of the admission for registration of the trademark in the Official Bulletin of Industrial Property.

The reasons that can be invoked in such a request can be found in art. 6 of Law no. No 84/1998 and refer to the identity or similarity with an earlier trademark and the ability to create, in the public's perception, a likelihood of confusion, including association with the earlier mark.

The opposition shall be formulated in writing, with an indication of the factual and legal grounds on which it is based, to be submitted to OSIM.

3.2. Procedure

The opposition procedure is provided for by art. 27 of Law 84/1998 and involves the completion of a mandatory stage of amicable settlement of the dispute arising, meaning that a two-month period is granted for reaching an agreement of the parties.  At the express and joint request of the parties, the term may be extended by a maximum of 3 months.

Subsequently, if the parties do not reach an agreement, the adversarial procedure is opened before OSIM, meaning that the applicant for the trademark is served with all the documents related to the application for the opposition, being granted a period of 30 days for formulating a written position.

The opposition shall be resolved on the basis of the arguments and documents of the parties by a committee of OSIM, which shall issue a reasoned decision, communicated to the parties within 30 days of its pronouncement.

The solution of the OSIM committee is not final, it can be administratively challenged before the Appeals Committee of the Office, which issues a reasoned decision, communicated to the parties within 3 months.

If the solution achieved in the administrative procedure is not convenient for the parties, it can be appealed by lodging an objection, within 30 days from the communication, at the Bucharest Tribunal, followed by an appeal before the Bucharest Court of Appeal, according to the regulations found in art. 97-99 of Law 84/1998.

IV. Cancellation of the trademark

During the entire duration of protection of any of the trademarks registered before OSIM, there is the possibility, according to the provisions of art. 56 of Law no. 84/1998, for an interested person to formulate a request for its cancellation.

The main grounds which may be raised in applications for cancellation of a trademark related to the following aspects:

- the registration of the mark was made in breach of the provisions of Article 5 (5) (a). (1) of Law no. 84/1998 – e.g. the mark is too generic, uses common expressions, contrariety to good morals;

- the trademark is identical to an earlier trademark and the goods and services for which the trademark is applied for or registered are identical to those for which the earlier trademark is protected

- if, by reason of identity or similarity to the earlier mark and for reasons of identity or similarity of the goods or services which the two marks designate, a likelihood of confusion may be created in the public's perception, including the likelihood of association with the earlier mark;

- the trademark was applied in bad faith, i.e. for a tease purpose or to mislead consumers, in the interpretation proposed by the Court of Justice of the European Union in Case C-529/07 Goldhase.

However, in order to sanction the passivity of the proprietor of an earlier mark, who does not take steps to protect the intellectual rights held, Art. 68 of Law. Regulation (EC) No 84/1998 imposes a temporal limitation in the exercise of the remedies referred to above.

Thus, the owner of an earlier trademark, who tolerated during an uninterrupted period of 5 years the use in Romania or in the European Union of a later trademark, knowing about that use, cannot ask for the annulment or oppose the use of the later trademark for the goods and services for which that later trademark was used, unless registration of the later trademark was requested in bad faith.

The cancellation of the trademark shall have a retroactive effect.

V. Representative case-law on the similarity of trademarks

The ground of opposition or cancellation that most arouses attention relates to the similarity of a later trademark with an earlier trademark, given that it also has economic implications, with individuals seeking to protect their reputation and the commercial statute associated with the trademark by using it.

In this respect, as an example, by Decision no. 418A/11.04.2018 the Bucharest Court of Appeal, Fourth Civil Section, annulled the Woody pellets trademark,  following the summons of the applicant who owns the Woody trademark. The court noted that phonetically the emphasis is on the first word, which is also the one perceived by untrained people who might come into contact with that name.

Another example is given by Sentence no. 229 of 21.02.2017, through which the Bucharest Tribunal established a likelihood of confusion and association between the raw'z raw vegan and  RAWZ raw vegan food delivered brands, which are phonetically similar, even identical in part.

Also in the sense of phonetic similarity, the Bucharest Court of Appeal ruled, by the Decision nr. 387/A/11.03.2018, regarding the brands "Medical Agenda" and "Pocket Medical Agenda".

In the cases referred to above, the courts also proceeded to analyze the visual similarity of the marks, meaning that they used as benchmarks the way the letters were stylized, the different colors, and any associated figurative elements.

The visual component in Woody was therefore also taken into account by the Court when ruling on the case, as follows: Visually, the two marks have rather high similarity. Thus, the Court again takes into account the preeminence of the word "Woody", in the case of both marks the initial capital letter being an oversized "W" compared to the rest of the letters and also stylized. Finally, both marks each include a woodpecker, a question already raised in the context of the conceptual analysis. The elements that weigh the visual similarity and make it only quite high and not very high are the different colors used (predominantly beige, the color of the wood in the case of the appellant's mark; predominantly green in the case of the intimate's color) and the different stylization of the woodpecker, which is visually dominant and well outlined in the case of the contested mark and only sketched within the previous mark (where it is,  however, visible as such).

In the RAWZ case, the court also found a strong visual component, since the intimate's mark and the subsequent sign/mark of the similar appellant, the overall impression being given by the larger writing of the quasi-identical rawy/ RAW'Z elements, followed by the smaller writing, in lower case characters (thus opposite to the uppercase ones) "raw vegan", the other different elements (different graphic stylization, different graphics of the characters) not having a sufficiently pronounced weight to remove the overall similarity of signs.

VI. Extrapolation of protection at the European level

It should be noted that a judgment obtained at both national or European level may be used with the force of res judicata (in practice it may become an argument in sustaining the need to reject another attempt to cancel the trademark) by virtue of Article 63 of Regulation (EU) 2017/1001, according to which,  the application for revocation or invalidity is inadmissible if an application having the same subject-matter and the same case has been settled on the merits,  between the same parties, either by the Office or by a court with jurisdiction in the field of EUi as referred to in Article 123, and the decision of the Office or of that court on the application in question has acquired the force of res judicata.

Moreover, we show that an earlier national trademark may oppose a later European trademark and vice versa, according to Article 8 of Regulation (EU) 2017/1001.

VII. Conclusions

Following the analysis, we conclude that, in order to be adequately protected, it is recommended that trademark holders exercise regular monitoring and proactive conduct in order to identify and remedy any potential threats to their rights.

MAXIM / Associates

Alexandra Tomuță și Raluca Maxim