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Trademark dilution under the Romanian legislation
I Legal provisions and dilution concept
The Romanian legislation provides for protection against dilution with respect to:
(1) the registration of a later trademark;
(2) the actual use of a later trademark,
although, neither the legislation, nor the case law, contain the definition of “dilution”.
(1) The registration of a later trademark
The Law No. 84/1998 regarding trademarks and geographical indications, in its article 6 e), mentions that “a trademark is refused to registration if the said is identical or similar with a well-known trademark in Romania for different products or services than the ones for which the trademark is registered, with the condition that the use of the registered trademark for such products or services to indicate a link between those and the owner of the registered trademark, and such use to create the risk of producing damages to the owner of the registered mark”.
The Regulation No. 883/1998 for the application of Law No. 84/1998 regarding trademarks and geographical indications, within Rule 15(4) b), clarifies the point on the products and services with which a link is to be created, as following: “the use of the trademark indicates a link between the owner of the well-known trademark and the products or services for which the trademark represents the object of an application or is registered, use which would risk to cause damages to the owner of the well-known trademark”. In conclusion, the use of the trademark is to indicate a link between the owner of the well-known trademark and the products or services for which the later trademark is applied or registered.
Within the same Rule 15 (4) b), the Regulation No. 883/1998 for the application of Law No. 84/1998 regarding trademarks and geographical indications, also introduces two other alternative conditions which should be considered in assessing if a trademark is to be rejected to registration based on a previously registered well-known trademark, as following: the use of the trademark is at risk to disturb the distinctive character of the well-known trademark” and “by using the trademark it could be unjustly profited by the distinctive character of the well-known trademark”.
(2) The actual use of a later trademark
The Law No. 84/1998 regarding trademarks and geographical indications, within article 35 second paragraph point c), also establishes that the owner of a trademark which obtained a reputation in Romania can request the courts to stop third parties from using in the course of trade, without the trademark owner’s consent, an identical or a similar sign for different goods or services if “by using the sign without justified reasons it could be benefited of the distinctive character or the repute of the trademark or use of the sign would cause damage to the owner” of the trademark with the reputation.
As Paris Convention was approved by Decree 1777/1968 and Marrakech Agreement (including the Annex 1 C – TRIPs) was ratified by Law 133/1994, therefore, both becoming internal Romanian legislation, based on article 16 (3) of TRIPs linked to article 6bis of the Paris Convention, protection against dilution for well-known trademarks is granted under the Romanian law. In consequence, according to the said provisions, the owner of a well-known trademark is entitled to prohibit the use of a trademark which constitutes “a reproduction, an imitation, or a translation” of a well-known trademark “liable to create confusion” with that well-known trademark under the conditions that “use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use”.
II. Eligibility criteria for trademark protection against dilution
As previously provided, eligible for protection against dilution are: (i) well-known trademarks in relation to the registration of a later trademark (article 6 e) of the Law No. 84/1998 with respect to trademarks and geographical indications linked with Rule 15(4) b) of the Regulation No. 883/1998 for the application of Law No. 84/1998 regarding trademarks and geographical indications) and with respect to the use of a later trademark (article 16 (3) of TRIPs as ratified by Law 133/1994 linked to article 6bis of the Paris Convention as approved by Decree 1777/1968) and (ii) trademarks having a reputation in relation to the use of the later mark (article 35 second paragraph point c) of Law No. 84/1998 regarding trademarks and geographical indications).
(1) General implied criteria for well-known trademarks and trademarks having a reputation: registration and distinctiveness
Although, the Romanian law does not expressly mention that, in order for a trademark to be eligible for protection against dilution, the said trademark needs to be distinctive (the degree of distinctiveness for well-known trademarks is provided only as an alternative condition for assessing the well-known character and only for ex officio opposing identical or similar trademarks), this could be inferred from the interpretation of the legislation.
As explained, the previously identified legal provisions entitle trademarks having a reputation and well-known trademarks to protection against dilution, but all the laws mentioned above relate only to registered trademarks having a reputation or registered well-known trademarks, i.e. the wording of the mentioned laws is: “goods or services which are not similar to those in respect of which” the trademark protected against dilution “is registered”.
However, according to the Romanian law, a trademark should be either inherently distinctive or have acquired distinctiveness by use in order to be registered.
In consequence, as (i) only the registered trademarks having a reputation and registered well-known trademarks are protected against dilution and (ii) distinctiveness is a condition of registrability, the obvious conclusion would be that distinctiveness is a condition for protection against dilution, under the Romanian law.
(2) Special requirements for each category of trademarks: well-known trademarks and trademarks having a reputation
(i) Well-known trademarks
The specific criteria based on which a trademark is to be considered well-know are provided in the Regulation No. 833/1998 for Implementing the Law No. 84/1998 concerning trademarks and geographical indications, which are pretty similar to the WIPO Recommendations, as following: the said trademark to be widely known (A) on the Romanian territory and (B) within the segment of a public to which the products and services address.
The segment of the public is to be established on the following elements:
- the category of potential consumers targeted by the products and services to which the trademarks addresses. Identifying the category of potential consumers is made on groups of consumers of certain products or services to which the trademark is used and not on groups of consumers of a general category of products or services.
- the circuits of distribution of the products or services to which the said trade mark refers.
In conclusion, to establish if a trademark is well-known in Romania, recognition of the trademark as well-known in a limited product market (“niche market”) is sufficient.
(ii) Trademarks having a reputation
The criteria for establishing that a trademark has a reputation are not provided in the law, leaving this aspect open for interpretation, but only to such interpretation which is in line with the European Union legislation, including articles 4(4)(a) and 5(2) of the Directive 2008/95 of the European Parliament and of the Council and the jurisprudence of the (European) Court of Justice, e.g. General Motors Corp v. Yplon S.A. case C-375/97 where the (European) Court of Justice decided that in order for a trademark to enjoy reputation in the light of article 5(2) of the First Council Directive (89/104/EEC) of 21 December 1988 to approximate the laws of the Member States relating to trademarks “a registered trademark must be known by a significant part of the public concerned by the products or services which it covers”, “which part may consist of a part of one of the countries”.
In consequence, to establish if a trademark has a reputation in Romania, recognition of the trademark as a trademark having a reputation in a limited product market (“niche market”) is sufficient.
III The point in time when the well-known or reputation character has to be assessed
Regarding the point in time when the well-known or reputation character has to be assessed, the Romanian law provides (within the definition of the well-known trademark notion) only that: “a well-known trademark is a widely-known trademark on the date of the filing of the application for registration or at the date of the invoked priority within the application”.
In consequence, there is no similar reference in law regarding the moment when the reputation character should be considered.
In the circumstances, the answer comes from the interpretation of the general legal procedural principles.
In this respect, one of the general conditions for filing a court action is that the right to exist at the moment when the said is filed. Therefore, from this point of view, the reputation character should be assessed at the moment when an anti-dilution court action is filed with the court in order to establish if, at the time when the mentioned court procedure is filed, the owner had the right to act (i.e. was the owner of a trademark having a reputation). In contrast, there are opinions among practitioners, which we strongly support, that it would be too formal to reject a court action only on the basis that a person had not had the right to file a court action at the moment when the said was filed, but such right was further obtained during the court procedures. In this situation, the reputation character should be assessed at the moment when a decision is taken by the judge, even though the outcome of the case very much depends on the extent of use of the sign against which the anti-dilution actions had been started. Thus, it is our opinion that a decision in favor of the plaintiff should be taken if the use of the sign against which the anti-dilution action started had been continuing until the court decided and a rejection of the court action should occur if the plaintiff had stopped such use before the trademark obtained reputation, during the court procedures.
Coming back to the well-known trademark concept, on the same note and taking into account that a well-known character, once established, does not last indefinitely (i.e. a trademark might have been established as well-known on “the date of the filing of the application for registration or at the date of the invoked priority within the application” as mentioned above, but could have very easily lost its well-known character along the years), it would be absurd and, again, too formal to (1) dismiss a court action filed by the owner of a well-known trademark based solely on the reason that the trademark was not well-known at the date of the filing of the application for registration or at the date of the invoked priority within the application or the said character was not evidenced at that time if, later on during the procedures until a decision is reached, the trademark became well-known or the well-known character was established or (2) allow a later trademark to be registered only on the reason that the trademark was not well-known at the date of the filing of the application for registration or at the date of the invoked priority within the application or the said character was not evidenced at that time if, again, later on during the procedures until a decision is reached, the trademark became well-known or the well-known character was established.
IV Burden of proof
The eligibility for protection against dilution is a matter of law in the sense that it is for the courts to decide on the basis of all the evidence brought by the parties in the procedures and on a case-by-case.
The burden of proof regarding the eligibility criteria is on the person claiming that a certain trademark is well-know or has a reputation.
One could evidence that a mark meets the eligibility criteria by bringing as much evidence as possible in the circumstances.
As the notion of well-known trademark is left for interpretation to the court, there are cases when sales figures are sufficient and cases when surveys are taken into account. Unfortunately, there have been not so many cases in Romania where trademarks to be considered well-known, therefore, a pattern or a standard has not yet been established.
V Conclusions
It is to be mentioned, that there are voices among the Romanian practitioners which consider that the concepts of reputation and well-known are one and the same, even though, both of the said are clearly provided within the Romanian legislation (which includes international treaties and clear-cut interpretation) and have different methods of being assessed.
In this respect, we strongly support the view that there are two types of trademarks identified by the Romanian legislation interpreted in the light of the European Union legislation, at least from the following reasons:
(i) they are to be evaluated differently: e.g. well-known trademarks should be “widely known” and “on the whole territory of Romania”, as long as trademarks having a reputation should be “known” and only “on a part” of a country.
(ii) it is in the interest of the owners of well-known trademarks and trademarks having a reputation which could claim either a higher or a lower degree of “fame” for their trademarks, depending on the available evidence to them at the time.
Having said the above, it is indeed the case that:
(i) the Romanian law does not, per se (A) provide for a trademark having a reputation to be ex officio opposed to a later identical or similar mark for different products or services and (B) grant the right to oppose such later mark to the proprietor of a trademark having a reputation, but
(ii) as long as the owner of a trademark having a reputation is entitled to act against the use of a later trademark under the conditions already expressed above, and taking into account that the ultimate legitimate scope of a trademark registration is the use of that trademark, the obvious interpretation would be that the provisions regarding the rights conferred to the owner of a trademark having a reputation with respect to the use of the later mark are to be extended by analogy to the procedure of registration of the later trademark.
In conclusion, no problems in applying the Romanian legislation should be encountered if the correct interpretation and the provisions of the international conventions and agreements (as part of the Romanian legislation) would be taken into consideration, although for clarity, it is advisable that the Romanian legislation to be modified in the sense to include an express specification that the proprietor of a trademark having a reputation is entitled to act against the registration of a later trademark under the conditions mentioned.
by Andra Musatescu, Managing Partner, Ph.D, L.L.M. (Durham, U.K.), Attorney-at-Law, Industrial Property (Trade Mark, Patent, Industrial Design) Attorney, Arbitrator-WIPO, European Trade Mark and Design Attorney
Andra Musatescu Law & Industrial Property Offices
13 Septembrie 121, Bl. 127,
Ap. 21, sector 5, Bucharest, Romania
Tel.: 004021 411 05 76
Fax.: 004021 781 47 93
Emails: amusatescu@dnt.ro
andramusatescu@andramusatescu.ro
www.andramusatescu.ro