What's the 'use'?
The importance of the decision lies in the detailed and very reasoned judgment on what constitutes use of a mark. This decision will influence future cases.
According to Romanian Trademark Law, any interested person can request in court that rights be deemed exhausted if a trademark owner hasn’t used the mark for five years. The burden of proof of use is on the trademark owner. Failure to submit proper evidence of use will result in the exhaustion of rights. As the law gives very few indications about what constitutes ‘use’ of the mark, practitioners have to rely on the guidance given by court decisions.
In a recent case, cosmetics company Danya sued a German subsidiary of L’Oréal for the exhaustion of rights of three international registrations of ‘Jade’ with a pictorial device. Danya claimed the marks were not in use on Romanian territory.
The marks held by the proprietor L’Oréal were registered for various cosmetic goods in class 03, such as “oils and creams for the skin, toothpaste, mouthwash” and “perfumery goods, cosmetics, soaps”. The defence of the marks was based on substantial evidence consisting of invoices and other sales documents and photos.
“The burden of proof of use is on the trademark owner."
All the evidence submitted during the trial was related to a single product, namely lipstick, for which photographs were presented, whereas the other documents presented did not explicitly mention that particular mark. Moreover, the inscription of the name Jade on the lipstick was in very small letters as a commercial name (Jade Düsseldorf) rather than as a trademark.
The defendant argued that the use of the mark Jade for a single product (lipstick) would be sufficient to cover all the goods of the three trademarks, alleging that the products for which the marks would be used and the other products for which the marks are registered are largely complementary.
The court rejected the evidence and allegations of the proprietor, and admitted Danya’s claim for exhaustion, though with the possibility of appeal. The principles of the court decision are:
