Dragos M Vilau
VILAU | ASSOCIATES The 2010 amendment to the Trademark Law extended protection to all unregistered marks so that rights holders can oppose the use and registration of their marks by third parties
Unregistered trademarks enjoy protection in Romania pursuant to Article 6bis of the Paris Convention for the Protection of Industrial Property, as well as the Trademark Law (84/1998).
Before 2010, protection of unregistered trademarks was limited to well-known marks. However, the 2010 amendment to the Trademark Law extended protection to all unregistered marks so that rights holders can oppose the use and registration of their marks by third parties.
The Trademark Law defines a ‘well-known trademark’ as a mark that is “widely known…to the relevant segment of the public…without registration or use being required in order to be opposed”.
The following non-exhaustive criteria are assessed in order to determine whether a trademark is well known in Romania:
- initial or acquired distinctiveness;
- the scope and length of use;
- the scope and length of advertising;
- the geographic area of use;
- the degree of familiarity of the relevant public; and
- the existence of identical or similar trademarks for identical or similar products of a trademark owner other than that claiming that its trademark is well known.
The new rules implemented following the 2010 amendments to the Trademark Law introduced some changes to the terminology used when establishing whether a trademark is well known. In particular, the rules define ‘use’ of a trademark as “distribution in a serious and significant volume”; while ‘degree of use’ is defined as the quantity of goods or services to which the trademark applies and which are marketed either in Romania or for export. The term ‘geographic area’ has been narrowed and is now defined as awareness of the well-known trademark in Romania (in the previous rules, this concept included neighbouring territories in which the Romanian language is spoken, territories covered by the same media and countries that have close commercial ties to Romania). Finally, ‘degree of familiarity’ with the mark is defined as the proportion of the public that is aware of the mark’s existence (rather than the degree of familiarity arising from the extent of coverage on the Romanian market as a result of use for certain goods or services).
Romanian case law in this area has developed significantly over time.
In 2000 the Bucharest Tribunal issued a landmark ruling that the BEEFEATER mark was well known in Romania (Allied Domecq v Prodal, 94 SRL, Case 3850/1/2002 (5170/1999)), based on evidence of registration in 119 countries, imports made on the date of filing the application, labels, pictures, evidence of advertising abroad and the value associated with the trademark.
In 2003 the Bucharest Court of Appeal confirmed that a national word application for STARBUCKS should be refused based on Article 6bis of the Paris Convention, confirming that this provision also applies to services (Starbucks Coffee Company v Grupul Roman de Investitii, GRI SA, Case 1745/2003).
In 2006 the Bucharest Tribunal denied a trademark application for RED FORCE, holding that RED BULL is a well-known trademark in Romania (Red Bull GmbH v Trade Ventures and Projects SA, Case 15387/3/2005 (2323/2005)).
In a 2007 decision the Bucharest Court of Appeal stated that the criteria established by the implementing rules for the Trademark Law should not be applied, given that the law clearly does not require trademark use or registration in Romania. This decision represented a departure from earlier practice with respect to unregistered trademarks that were not well known.
In 2008, in Lucky Strike v Parc Industries SRL, the Appeal Board of the Romanian Patent and Trademark Office decided that the LUCKY STRIKE device trademarks (black/red circles) were well known based on evidence of advertising in the media, events sponsored by the rights holder in many Romanian cities and sales volumes over a seven-year period, and therefore denied a trademark application for the ZAR (M 2004 04070) word and device mark.
However, the most recent case law appears to have taken a step backwards in terms of protection for well-known trademarks, requiring rights holders to prove not only that a mark is largely known to the majority of the relevant public according to the criteria established by the Trademark Law and its implementing rules, but also the percentage of the relevant public among whom the trademark is well known. The failure of the courts to determine such a percentage has resulted in a considerable number of lower-court decisions being overturned by the High Court of Cassation and Justice and being sent back for retrial.
Other unregistered commercial signs
Commercial signs, such as trade names and company logos, are protected under the Company Law (31/1990), the Trade Registry Law (26/1990) and the Unfair Competition Law (11/1991).
According to the Company Law, trade names are an essential attribute of a company, while registration of a company logo is optional. However, according to the Unfair Competition Law and the 2010 amendments to the Trademark Law, company logos and other signs used in commercial activity enjoy the same scope of protection as trademarks or trade names; although in terms of enforcement of company logos, the rights holders can act based on the Unfair Competition Law only.
The 2010 amendment to the Trademark Law introduced a new relative ground for refusal: “the existence of a previous right… especially a right to a name, a right to image.” This is consistent with the recent changes to the Civil Code, which acknowledge personal image rights and the possibility of taking action against the infringement of such rights.
Cancellation of a trade name
Article 8 of the Paris Convention provides that “a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”.
Significant case law in respect of the protection of trade names, including trade name cancellations, has developed in Romania over the past 10 years
Significant case law in respect of the protection of trade names, including trade name cancellations, has developed in Romania over the past 10 years, in which the courts anticipated the European Court of Justice decision in Celine (C-17/06). Some examples include the following:
- In Acer Incorporated ACER v Acerline (Case 1216/civ/2004) Acer sought cancellation of the trade name Acerline International, invoking its exclusive rights over its trade name and trademark ACER. Following the amendment of the trade name by the defendant during trial, the claim was partially admitted and it was acknowledged that by using the plaintiff’s trade name and trademark, the defendant had engaged in unfair competition. The court ordered that the decision be published in the mainstream media.
- In Dell Computers Corporation v Dell Computers Romania SRL (Case 6682/3/2005) the Bucharest Tribunal ordered the defendant to cease using Dell as a trade name. The court cancelled the registration – acknowledging that the defendant’s registration of this trade name represented an act of unfair competition against the plaintiff – and ordered the defendant to cease the offending activities.
- In Unicredito Italiano SpA v Unicredito Industrial (Case 23640/3/2007) the plaintiff filed suit against Unicredito Industrial in respect of the protection of its trademarks and trade names. The court granted the claim, cancelled the trade name Unicredito Industrial and ordered the defendant to change its trade name to one which did not include any combination of the trademark and trade name UNICREDITO and/or Unicredit Tiriac Bank. The court stated that the trade name Unicredito Industrial was similar to the famous trademarks UNICREDIT and UNICREDITO ITALIANO, and to the trade names Unicredito Italiano and Unicredit Tiriac Bank. Substituting the word ‘leasing’ with ‘industrial’ in the defendant’s trade name failed to change the situation from the previous file, in which the trade name Unicredito Leasing was cancelled.
- In Trust Eurotherm v B&B Eurotherm (High Court of Cassation and Justice Decision 4439 of June 30 2008) the High Court granted the second appeal and, based on the criteria set out in Celine, acknowledged that the trade name B&B Eurotherm infringed the plaintiff’s exclusive rights in its EUROTHERM mark. The court ordered the defendant to cease using the trade name B&B Eurotherm.
- In SC F SRL v SC El Greco Grup SRL (Bucharest Court of Appeal Decision 14A of January 22 2009, maintained by the High Court of Justice, Decision 1793 of March 16 2010) the court ordered the defendant to cease any commercial activity under the trade name El Greco, stating that the use of the sign EL GRECO by the defendant was not in line with fair competition rules.
- In PLG SRL v PLGG SRL (High Court of Justice, January 25 2011) the plaintiff’s claim was admitted and the defendant was ordered to cease using the trade name PLG, cease any activities under this sign and cease using the sign on documents or for advertising.
Notwithstanding the above case law, trademark practitioners are still concerned about the difficulties experienced when trying to replicate this practice before the Trade Register Office. Due to an old and non-harmonised provision in the Company Law – as well as poor cooperation between the Trade Register Office and the Patent and Trademark Office – the Trade Register Office still allows the registration of new trade names that are confusingly similar to earlier registered trade names or even trademarks. A change in such practice, or even a change in the Company Law, would help to reduce the number of cases that end up before the Romanian courts.
Dragos M Vilau is one of the founders of, and coordinates the trademark, copyright and data protection practice groups at, VILAU | ASSOCIATES. He is a member of the Bucharest Bar Association, the International Trademark Association and the Pharmaceutical Trademarks Group. He has been involved in numerous cases before the Romanian courts.