Bad faith registration in Romania
In February 2012, the High Court for Cassation and Justice rendered the final and irrevocable decision in a cancellation proceeding for registration in bad faith of a Romanian trademark.
This is a landmark decision because the detailed arguments fill the gap left by the absence of clear legal provisions in respect of bad faith. The majority of the previous bad faith cancellations were for situations in which commercial relationships had existed between the parties at some point in time. This recent case did not involve any prior relationship between the parties.
According to Romanian laws, a request for cancellation for trademark registration in bad faith can be submitted with the Municipal Court of Bucharest at any time during the validity term of the mark, the burden of proof being on the claimant. Doctrine shows that bad faith consists in a guilty behaviour of a person who knowingly commits a tort in breach of law, said tort being, usually, fraud contrary to the interests of a third party, fraud of the law or abuse of right.
“the rightful owner—has to reverse the presumption of good faith by proving that the applicant had knowledge, at the time of filing the application, about the mark.”
In the field of trademark protection, the guilty behaviour consists in (i) the knowledge of the applicant—before the time when the application is made—that the mark applied for is used, or registered, by another party, the applicant understanding that two persons cannot use simultaneously the same mark; (ii) taking advantage of the absence of registration in Romania; and (iii) applying for said mark with the purpose of removing a competitor from the market.
The claimant—that is, the rightful owner—has to reverse the presumption of good faith by proving that the applicant had knowledge, at the time of fi ling the application, about the mark or should have had knowledge with a minimum of diligence.
The claimant, the German company Takko, is the owner of several international registration and Community trademarks (CTMs) for marks that include the word ‘Takko’. The CTMs were registered before January 1, 2007, when Romania joined the EU, so their protection in Romania started in January 2007. The international registrations did not cover Romanian territory at the filing date of the mark that was cancelled.
The German company uses its marks in a particular graphic form, mainly for clothing articles in class 25 that are sold in its own chain of stores.
In Romania, Takko Germany started activity in 2007, after the date when its CTMs aquired protection according to the CTM register.
The defendant, ACT, is a small Romanian automotive company specialising in spare parts for vehicles.
