Copyrights thwart HARRY POTTER registration

In Time Warner Entertainment Company v Harmopan SA (Case 1011619/2003), the Examination Committee of the Romanian State Office for Inventions and Trademarks (SOIT) has refused the defendant's application to register the mark HARRY POTTER for goods in Class 30 of the Nice Classification on the grounds that the plaintiff owns earlier copyrights in that name.

On June 12 2002 Harmopan applied to register with the SOIT the trademark HARRY POTTER in Class 30 for "pastry and confectionery products, wafers with or without filling". Time Warner filed an opposition based on:

• claims that the HARRY POTTER is a famous mark;
  
  
• its prior registered national trademark HARRY POTTER for products in Classes 25 and 28;
  
  
• trademark registration applications dating from April 3 2003 for HARRY POTTER AND THE SORCERER'S STONE, HARRY POTTER AND THE CHAMBER OF SECRETS, HARRY POTTER AND THE PRISONER OF AZKABAN, HARRY POTTER AND THE ORDER OF THE PHOENIX and HARRY POTTER AND THE GOBLET OF FIRE for goods in Class 16; and
  
  
• its earlier copyrights in a film that was marketed under the titles Harry Potter and the Sorcerer's Stone and Harry Potter and the Philosopher's Stone.

The SOIT rejected the first three claims holding that:

• Time Warner had failed to prove that HARRY POTTER is a famous mark within the meaning of Articles 3(c) and 20 of the Romanian Trademark Law (Law 84/1998 concerning trademarks and geographical indications) and Rule 16 of the Trademark Law's implementing regulations;
  
  
• since the earlier national trademark registration for HARRY POTTER only covers goods in Classes 25 and 28 (and not Class 30), there was no evidence of a risk of confusion in the Romanian market; and
  
  
• Time Warner's five trademark applications for goods in Class 16 were filed after Harmopan's application.

However, the SOIT accepted Time Warner's evidence that it holds prior copyrights in the Harry Potter name (registered in the United States in 2000) as a result of the marketing of its film. The SOIT held that pursuant to Articles 23 and 25 of the Trademark Law, this evidence was sufficient to allow Time Warner to successfully oppose the registration.

Alexandru Harsany, Nestor Nestor Diculescu Kingston Petersen, Bucharest