trademark-vs-trade-name-620
1 October 2012TrademarksRaluca Vasilescu

Trademark vs trade name: which is more important?

Article 8 of the Paris Convention specifies that “A trade name shall be protected in all the countries of the European Union without the obligation of filing or registration, whether or not it forms part of a trademark.”

Various national laws established specific rules for deciding the issue, but when it comes to European jurisdictions, we are still far away from a uniform approach.

Bibas Kft is a Hungarian company specialising in professional kitchen machines, including coffee machines for use in restaurants and bars. In April 2008, it applied for a trademark in Romania according to the national trademark law.

The application was for ‘Bibas Professional and device’ for a selected list of goods in Class 35: “The bringing together, for the benefit of owners of kitchen machines of large sizes and of coffee machines, except for their transport enabling customers to conveniently view and purchase the same”. The trade name Bibas Kft has been registered with the Hungarian Registrar of Companies since 1991.

In 2002 a Romanian company, Bibas SRL, was founded. The name Bibas SRL was selected on purpose to show the commercial relationship between the Hungarian and Romanian companies. Bibas Kft was a shareholder in Bibas SRL.

Over the years, something went wrong in the cooperation of the firms. The Romanian company Bibas SRL applied for registration in November 2007 for a mark, whose pictorial device is represented on the left.

The list of goods includes Class 11: “Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes”, and part of Class 20: “Furniture”. The 2008 application for ‘Bibas’ was published in May 2010, when the new Trademark Law came into force abolishing the ex officio citations for prior rights.

Bibas SRL lodged opposition against the Hungarian company’s 2008 application for ‘Bibas Professional’, quoting several types of prior rights: the earlier 2007 application for ‘Bibas’, and the trade name Bibas of November 1994. The opposition was admitted following a summary examination.

In February 2011, Bibas Kft lodged an appeal with the Re-Examination Commission of the Romanian Patent Office (OSIM), arguing in essence as follows:

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