Court recognises high distinctiveness of earlier marks in cancellation action

Nutricia International BV, part of the Danone Group, has been successful in a cancellation action brought against a local producer of milk and milk products, SC Avi Seb Impex SRL.
Avi registered with the Romanian Trademark Office the device mark MILAPO, which covered all goods in Class 29 of the Nice Classification, including milk and milk products:
Nutricia is the owner of the following trademarks:
  • the Community trademark (CTM) MILUPA (Registration 007198773), registered for, among other things, “dietetic substances adapted for medical use; food for babies” in Class 5 and “milk and milk products” in Class 29;
  • the figurative CTM MILUPA (Registration 006651939), registered for, among other things, “dietetic substances adapted for medical use; food for babies” in Class 5 and all goods in Class 29:

  • the figurative CTM MILUPA (Registration 005065156), registered for, among other things, “dietetic substances adapted for medical use; food for babies” in Class 5:

Nutricia considered that its prior trademark rights were infringed by Avi’s registration, especially in light of the inherent distinctiveness of the MILUPA marks and the fact that they had acquired distinctiveness through use in Romania.

Therefore, Nutricia decided to file an action for the cancellation of the MILAPO device mark.
Nutricia’s arguments in court were extensive. Among other things, it alleged as follows:
  • The trademarks at issue were similar.
  • Its CTMs had a high level of distinctiveness, which was not only inherent, but also acquired through extensive use in Romania. This was evidenced by the sales volumes, surveys and the amount of advertising and marketing undertaken by Nutricia in Romania in connection with the brand;
  • The beginning of a trademark is of high importance.
  • The products were identical or similar.
  • There was a risk of confusion and association.
In its judgment (204 A/2011), the Bucharest Court of Appeal decided as follows:
  • The principle applicable in assessing the verbal similarity of two marks is that the beginning of the marks is of high importance. Taking into account that the compared marks shared the same prefix, ‘mil’, the trademark were similar.
  • The MILUPA marks have “a certain degree of distinctiveness which cannot be contested”.
  • The risk of association was clear, as consumers were likely to believe that there was a link between the earlier marks and the contested mark.
The decision is significant, not only for Nutricia, which invested large sums of money to establish a reputation for its MILUPA marks in Romania, but also as a precedent, as the court confirmed that MILUPA has a high distinctiveness in Romania. The decision of the court is final and binding, and will most probably be followed by other courts.
Arguably, other pharmaceutical and nutritional companies can now take similar actions based on this decision and rely on previous well-known or famous marks to request the cancellation of identical or similar trademarks, provided that these marks fall within the five-year statute of limitation period provided by law.
Dr Andra Musatescu, Andra Musatescu Law & Industrial Property Offices, Bucharest
Andra Musatescu Law & Industrial Property Offices acted for Nutricia in this case

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