1 August 2010Jurisdiction reportsRaluca Vasilescu

Court explains bad faith cancellation

The motivation is important for its reasoning, as there is no clear definition in Romanian legislation of what ‘bad faith’ means.

The facts

The claimant, a German clothing manufacturer, has several Community Trademarks and international registrations for a ‘T & coloured logo’ mark. The international registrations did not cover Romania, but the Community Trademarks, filed in 2003, were valid in Romania from January 1, 2007, when the country joined the EU. The German company has stores in many European countries. In Romania, the company has been operating since 2008.

The defendant is a Romanian company registered as dealing with the sale of vehicles and automotive spare parts. It filed a trademark application with the Romanian Patent Office in February 2006—a year before the claimant’s marks became valid. The application proceeded to grant.

The Romanian company sent a cease and desist letter at the end of 2008 to the German company’s Romanian subsidiary asking it to stop using the mark ‘T & coloured logo’. The German company refused to comply and filed a claim for cancellation of the Romanian mark in 2009 on the grounds that it was registered in bad faith.

The cancellation claim

According to Romanian law, any interested person can lodge a request for cancellation of a registered trademark on bad faith grounds at anytime during the validity term of the mark. Such requests should be filed at the Municipal Court of Bucharest.

The claimant must prove bad faith with evidence showing that the defendant was aware or could have reasonably been aware of the pre-existing mark by taking minimum care. The difficulty stems from the fact that there were no commercial relationships between the parties, though the claimant aimed to prove that the applicant should have been aware of the existence of the mark.

The decision

The judge cited the current jurisprudence, which generally sees bad faith as “subjective attitudes that could be identified when the person commits a fraud against the interests of a third party, fraud to the law or an abuse of right”.

“According to Romanian law, any interested person can lodge a request for cancellation of a registered trademark on bad faith grounds at any time during the validity term of the mark.”

There is a further explanation for trademarks:

“[F]raud could be the knowledge that the applicant has that the mark applied for is used by another one or that other person has the intention to use, the applicant knowing that it is not possible that both use the same mark but takes the opportunity that the mark was not applied for registration in Romania, with the purpose to eliminate the competitor from the market.”

The following facts were sufficient to prove bad faith:

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