Limited protection given to marks with weak distinctive character highlighted

Romania
The Bucharest Appeal Court has upheld two decisions of the Bucharest Tribunal in which the latter had held that there was no likelihood of confusion between the international trademarks VOSLAUER BIOLIMO and the national word mark LIMO.

Since 2005 George Ivanescu has been the registered owner of the national word trademark LIMO (Registration 070827) for goods in Class 32 of the Nice Classification. Since 2007 Voslauer Mineralwasser AG has held three international trademarks including the terms 'Voslauer Biolimo', which designate, among other countries, Romania, in relation to certain goods in Class 32 (lemonades and non-alcoholic beverages):


International Registration No 937570


International Registration No 937571


International Registration No 937572
 
Ivanescu filed oppositions with the Romanian State Office for Inventions and Trademarks (SOIT) against the registration of the VOSLAUER BIOLIMO marks in Romania based on his rights in the LIMO mark.
 
SOIT's Examination Commission rejected the oppositions on the grounds that the trademarks at issue were not similar and that there was no risk of confusion among Romanian consumers. Ivanescu appealed to SOIT’s Re-Examination Commission, which rejected the appeals.
 
In particular, the Re-Examination Commission agreed with Voslauer Mineralwasser that the earlier trademark LIMO had a weak distinctive character in relation to goods in Class 32, as Romanian consumers are most likely to interpret it as a reference to the word 'lemonade' ('limonada' in Romanian), which is defined by the main Romanian language dictionary as a “refreshing beverage made from lemon juice (or a lemon substitute), water and sugar; sparkling refreshing beverage made from fruit syrup”. Considering that the protection afforded to trademarks with a lower distinctive character is not as wide as that afforded to trademarks with a high degree of distinctiveness, the Re-Examination Commission considered that the differences between the marks in question were sufficient to exclude any risk of confusion among the relevant public.
 
Ivanescu appealed to the Bucharest Tribunal, which rejected the appeals on the following grounds:
  • the LIMO mark had a weak distinctive character, due to the fact that the word 'limo' is short for 'lemonade'; and
  • the inclusion of the name Voslauer - the trade name of Voslauer Mineralwasser, a company which enjoys of a certain reputation in Europe - would exclude any risk of confusion among Romanian consumer.
Ivanescu filed a second appeal against two of the decisions issued by the Bucharest Tribunal, but both appeals were rejected by the Bucharest Appeal Court. These decisions are final and irrevocable.
 
The decisions may be relevant in relation to other opposition proceedings initiated by Ivanescu based on his Romanian word mark LIMO. Ivanescu has also opposed the registration of:
  • the Community trademark (CTM) application for LIMOMIX (No 008424921);
  • the CTM application for GAUDI LIMO (No 007369929);
  • the CTM application for FRITZ - LIMO (No 007148984); and 
  • the international trademark BLIMO (No 000927799), which designates the European Union.
Delia Belciu and Ana-Maria Baciu, Nestor Nestor Diculescu Kingston Petersen, Bucharest 

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