Romania’s Legislative Position on Notorious Trademarks as Well as on Trademarks That Have a Reputation
Published in “White Paper – International Trade Marks Committee of the IPO”, 2011
Romanian law no. 84/1998, regarding trademarks and geographical indications, as republished, (“Law 84/1998” or the “Trademarks Law”), contain provisions regarding both notorious trademarks and those that have a reputation in Romania or in the European Union.
The concept of notorious trademark is expressly defined by the Trademark law as opposed to the concept of reputed trademarks, as a mark largely known in Romania in the sector of the public targeted by the products or services for which the mark is applied, without being necessary for the mark to have been registered or used in Romania in order to be opposed. The opposed trademark has to be notorious on the filing or priority date of a trademark application.
The Trademark Law provides among the relative grounds for refusal at registration of a trademark application or of cancellation of a registered trademark, the marks that (i) are identical with a notorious trademark and are to be registered or have been registered for products and services which are identical with those for which the notorious trademark is protected or (ii) the marks that due to their identity or similarity with a notorious trademark and the identity or similarity of the products and services for which such are to be registered or have been registered there is a likelihood of confusion on the part of the public, including the likelihood of association with the notorious trademark. Moreover, the titleholder of a notorious trademark may request to the competent court to forbid a third party from using, without his consent, a sign which due to its identity or similarity with the notorious trademark and the identity or similarity of the products or services there is a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trademark.
With respect to the trademark that has a reputation in Romania or in the European Union, the Trademark Law provides among the relative grounds for which a trademark application is refused at registration or cancelled, if registered, the marks that are identical or similar to an earlier Community trademark or national trademark and are to be registered or have been registered for products and services that are not similar with those for which the earlier Community or national trademark is registered, when the earlier Community or national trademark has a reputation in the European Union or Romania and if by the use of the subsequent trademark it would take unfair advantage of the distinctive character or of the reputation of the earlier Community or national trademark. Moreover, the titleholder of a trademark that has a reputation in Romania or in the European Union may request to the competent court to forbid a third party from using, without his consent, a sign identical or similar to its trademark for products or services different from those for which the trademark is registered if by such use it would be taken unfair advantage of the distinctive character or of the reputation of the earlier Community or national trademark.
The trademarks that have a reputation in Romania or in the European Union are registered trademarks as opposed to notorious trademarks that do not have to be necessarily registered. Nevertheless, no specific criteria are provided by the law in order to establish if a trademark has a reputation in Romania or the European Union. SOIT’s examiners and the competent courts establish at their sole appreciation, on a case by case basis, depending on the provided evidence and the factual situation, if a trademark has a reputation in Romania or in the European Union.
The Romanian doctrine sustains that the trademarks that have a reputation are those that have become known to a significant part of the targeted public, fact that might be proven by any means of evidence. In addition, it has to be also proven the manner in which it would be taken unfair advantage of their distinctive character or of their reputation by the registration of a subsequent trademark.
In what concerns the notorious character of a trademark, the Trademark Law provides the following criteria in order to determine such:
(i) distinctive character, initial or acquired, in Romania;
(ii) duration and the extent of use in Romania of the notorious trademark in relation to products and services for which the mark is requested at registration;
(iii) duration and extent of the advertising of the notorious trademark in Romania;
(iv) geographical area of use of the notorious trademark in Romania;
(v) degree of awareness of the notorious trademark on the Romanian market by the sector of the public to which such is addressed;
(vi) existence of identical or similar trademarks for identical or similar products belonging to other person than the one that claims that its trademark is notorious.
When examining the relative grounds on the basis of the criteria mentioned herein above, Romanian State Office for Inventions and Trademarks (“SOIT”) may request to public authorities, institutions, as well as to the private law legal persons documents in order to establish the notorious character of a trademark in Romania.
The Regulation for the implementation of the Trademark law, as approved by Government Decision no. 1134/2010, (the “Implementation Regulation”), provides that in order to establish if a trademark is notorious it is sufficient for such to be largely known on the Romanian territory and to the sector of public in Romania to which such is addressed.
The sector of public is to be established, according to the Implementation Regulation, on the basis of the following elements:
(i) category of consumers targeted for the products or services to which the trademark refers to; the identification of the category of consumers is made on groups of consumers of certain products or services in relation to which the trademark is used;
(ii) distribution networks of the products or services to which the trademark refers to.
Neither the Trademark Law or the Implementation Regulation establish a certain percentage of the targeted sector of public in order to determine the largely known character of a notorious trademarks, leaving thus at the sole appreciation of SOIT’s examiners and of the competent courts the task of determining, on a case by case basis, if a trademark is notorious or not.
The degree of awareness of a trademark by the public may be appreciated, according to the Implementation Regulation, by taking into account its promotion, including advertising and promotion of the products or services to which the trademark is applied at fairs or exhibitions. In a case, a Romanian court has appreciated that even if a certain volume of sales and stocks has been proved, as well as the fact that the trademark in question has been promoted at fairs and exhibitions, obtaining several distinctions, all these evidences having thus the nature of proving that that trademark is known to the targeted segment of public, the lack of any proof as to the percentage of public that knows this trademark has been considered as not proving the largely known character of the trademark and therefore its notorious character has not been proved beyond any doubt.
The notorious character of a trademark may be proven by any means of evidence, as such is not retained ex officio by SOIT or by a competent court.
In order to sustain the notorious character of a trademark on the Romanian territory it might be presented documents as those regarding:
(i) the commercialization or the placing for sale of products or the supply of services under the notorious trademark;
(ii) import or export of the products on which the notorious trademark is applied;
(iii) advertising of the products and services under which the notorious trademark is known in Romania.
Although notorious trademarks have a legal defined framework and to a certain extent also the trademarks that have a reputation in Romanian or in the European Union, the lack of express and determined criteria lead to a subjective interpretation and to a case law that is sometimes not uniform.
