General Motors drives out HUMMER application

In General Motors Corporation v Rute Ithalat Ve Ihracat Anonim Sirket (Case 1007964/2003), the Examination Committee of the Romanian State Office for Inventions and Trademarks (SOIT) has upheld an opposition to the registration of HUMMER. The court held that there was a risk of association with the plaintiff's own HUMMER marks, however, it refused to rule on whether the application had been brought in bad faith.

Rute Ithalat Ve Ihracat Anonim Sirket (Rute), a Turkish company, applied to register HUMMER and design with the World Intellectual Property Organization as an international trademark in Classes 3, 25, 39 and 42 of the Nice Classification. It requested protection in a number of countries, including Romania.

Multinational car manufacturer General Motors Company (GM) filed with the SOIT an opposition against registration based on two prior, national HUMMER word mark registrations for goods and services in Classes 7, 9, 11, 28 and 37 and for goods in Class 12 respectively. In addition, GM requested that the SOIT issue a declaration noting the fame of its HUMMER marks in Romania and also claimed that Rute had brought the application in bad faith as it was an authorized dealer for GM's HUMMER-marked vehicles in Turkey.

The SOIT upheld GM's opposition, holding that there was a risk that consumers would associate the two parties' marks since (i) the services covered by Rute's application included car rental services, and (ii) they might think that GM had extended its business under the HUMMER marks to include the goods and services set out in Rute's application.

However, the SOIT refused to issue a declaration noting the fame of GM's marks as GM had failed to file pertinent documentation demonstrating:

• the duration and scope of use of the HUMMER marks in Romania with respect to the goods and services protected;
  
  
• the duration and scope of publicity for the marks in Romania;
  
  
• the geographical area of use of HUMMER in Romania and in neighbouring countries; and
  
  
• the degree of recognition of the marks on the Romanian market by the relevant section of consumers.

The SOIT also declined to issue a ruling on the bad-faith claim. It stated that in accordance with the provisions of Article 48 of the Romanian Trademark Law (Law 84/1998 on marks and geographical indications) such a claim may only be brought by way of an annulment action filed with a judicial court. The Trademark Law provides that a party may apply to the Municipal Bucharest Court at any time during the term of protection of a trademark, for "cancellation of the owner's rights conferred by the trademark on the grounds … [that the] trademark registration was applied for in bad faith".

The SOIT's decision may be further appealed to its Re-Examination Committee.

Alexandru Harsany, Nestor Nestor Diculescu Kingston Petersen, Bucharest