1 August 2013Jurisdiction reports

Invalidity and use in Romania

Consequently in order to invalidate such a trademark, if the five-year period has lapsed, it is necessary to justify the legal action on other grounds.

The first ground could be the fact that the applicant was acting in bad faith when he filed the application for the trademark, under Article 47(1)(c) of the Romanian Trademark Law. This action could be submitted any time during the period of protection, according to Article 47(2). The weakness in such an action is the difficulty of proving that the intention of the applicant at the time of application was to eliminate competitors from the market and to use the sign exclusively.

The second ground could be the fact that the trademark has not been put to genuine use in connection with the goods in respect of which it has been registered within a continuous period of five years from the registration date, under Article 46(1)(a). This action could be submitted any time during the period of protection, under Article 46(1).

First, although the provision stipulates that the five-year period is calculated from the registration date, our opinion is that intention of the law is that the term should not be calculated taking into consideration the period before the registration (between application and registration).

Instead, the five-year period could start later, for example in the situation when the trademark has been put to genuine use for a period of time and then was followed by a five-year period of non-use.

Second, the use must be real, public and serious (in volume and time) and in accordance with its essential function: to guarantee the identity of the origin of the goods. There is no real use of the registered trademark if the use is in a different form, eg, with other verbal elements, designs or colours.

There is no public use if the use of the trademark is on the invoices between the producer (the proprietor of the trademark) and the retailer; in that case the details from the invoice are known by a limited public, namely the accounting departments of the parties.

"The use must be real, public and serious (in volume and time) and in accordance with its essential function: to guarantee the identity of the origin of the goods."

The third ground could be the fact that the trademark has become the common name in the trade for a product in respect of which it is registered, in consequence of acts or inactivity of the proprietor, under Article 46(1)(b).

The reason for the first condition (“the trademark has become the common name in the trade for a product in respect of which it is registered”) is to permit everyone on the market to use the common name of the products. By virtue of the principle qui potest plus potest minus (he who has authority to do more also has authority to do less), the legal provision is the same for trademarks that are from the beginning the common name of the product.

The reason for the second condition (“in consequence of acts or inactivity of the proprietor”) is to sanction the passive proprietor who permits, by his acts or inactivity, the trademark to become the common name of the product.

The same must be applied when the acts or inactivity of the proprietor keep the status of the trademark to be the common name of the product, eg, when the proprietor himself uses the trademark in order to indicate the kind of the product and also when the proprietor remains passive for a long period (eg, five years) with no act of opposition against third parties that use the trademark in the market.

In our opinion it is compulsory for the Romanian law to be amended according to Community legislation and to exclude the five-year term for an action to invalidate a trademark which consists exclusively of a sign which may serve, in trade, to designate the kind of product. If the term remains, the starting point should be the date when the proprietor begins the genuine use of the trademark in the registered form.

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