DB Law Office - Romania
On 9 July 2019 the Romanian State Office for Inventions and Trademarks (OSIM) notified applicant Fabryki Mebli Forte SA of the provisional refusal of its application to protect the international trademark registration KASHMIR (1459101) in Romania for all goods in Class 20, namely:
Furniture; cupboards; vitrines; cupboard units; bathroom furniture; bench tables: office furniture; coffee tables; fitted kitchen furniture; fitted furniture; wall cupboards; tables; glass furniture; wooden furniture; dressers; wardrobes; wardrobe doors; furniture for children; console tables for mounting units of electronic equipment; furniture for kitchens; kitchen tables; upholstered furniture; bedroom furniture; cupboards for bedrooms; desks and tables; seats; furniture racks; living room furniture; dining room tables; fronts of cupboards; glass cabinets; doors made of glass for furniture.
The refusal was based on absolute grounds under Article 5(1)(f) of the Trademarks and Geographical Indications Law (84/1998), which refers to marks that are refused registration on the grounds that they deceive the public, especially with regard to the geographical origin, quality and nature of the goods or services.
Polish company Fabryki Mebli was founded in 1992 and is one of the largest manufacturers of self-assembly furniture in Europe – Kashmir being one of its furniture lines. The company filed a response to the provisional refusal of protection, which provided arguments for the non-applicability of the grounds invoked by OSIM.
Fabryki Mebli claimed that KASHMIR should be analysed in relation to the goods in Class 20 for which it was filed, and as such, is a distinctive sign as it does not convey any meaning in relation to the designated goods in this class and therefore does not deceive the public with regard to its geographical origin, quality or nature.
Further, Fabryki Mebli stated that its furniture products, including Kashmir, have been sold in Romania through several well-known stores and websites since at least 2016, and the average Romanian consumer of the relevant goods – deemed to be reasonably well informed, observant and circumspect – has no issues in identifying them as coming from the company. Fabryki Mebli also exports its products, including the Kashmir line, to more than 45 countries worldwide, with exports representing 80% of its total production.
To support the response, the company argued that KASHMIR, in relation to goods in Class 20, provides no indication as to the designated goods as cashmere and wood (ie, the main fabric of the furniture) are neither complementary nor substitutable.
Therefore, KASHMIR is not an indication of the characteristics, nature, quality or geographical origin of the goods in Class 20 for which the mark was filed and thus the public could not be deceived. The company stated that KASHMIR fulfils the essential function of a trademark – namely, to ensure the origin of designated goods.
All of these arguments were received by OSIM, which has now approved KASHMIR for registration in Romania for all the designated goods in Class 20.