Nestlé bars BRASERO registration

Romania

In Société Des Produits Nestlé SA v Duma (Case 1002661/2003), the Examination Committee of the Romanian State Office for Inventions and Trademarks (SOIT) has refused the defendant's application to register the mark BRASERO in Classes 35, 37, 39, 41, 42, 43, 44 and 45 of the Nice Classification. The SOIT held that the proposed registration was confusingly similar to Nestlé's well-known BRASERO mark registered for goods in Classes 29, 30 and 32.

Sabina Duma, an individual, applied to register the BRASERO mark with the SOIT. Nestlé opposed registration based on its prior national registration for BRASERO. It claimed that the mark required a high level of protection because it is well known.

The SOIT rejected Duma's application, holding that Nestlé had demonstrated that its BRASERO mark is well known in Romania. The SOIT pointed to evidence showing:

  • the degree of distinctiveness of BRASERO in Romania;

  • the duration and scope of use of the mark in Romania with respect to the goods and services protected;

  • the duration and scope of publicity for the mark in Romania;

  • the geographical area of use of BRASERO in Romania and in neighbouring countries; and

  • the level of recognition afforded to the mark on the Romanian market by the relevant sector of the public.

The SOIT also noted that Nestlé's rights in its BRASERO mark predated Duma's trademark application.

The decision may be appealed to the Re-Examination Committee of the SOIT.

Alexandru Harsany, Nestor Nestor Diculescu Kingston Petersen, Bucharest

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