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10 August 2020TrademarksNicoleta Anghelescu

Romania: the right to replay

A recent case Cabinet Enpora IP represented before the Bucharest Court of Law, whose decision was issued on February 19, 2020, brought to our attention the situation of invalidation proceedings that become opposition proceedings—both being based on same prior rights, same legal grounds and between the same parties.

In Romania the majority of trademark matters are decided by the State Office for Inventions and Trademarks (OSIM) except for enforcement proceedings and trademark invalidation and revocation proceedings, which are still decided by the Bucharest Court of Law and will continue to be in the next years until the amended trademark legislation comes into force.

In this particular case our client opposed the trademark application ‘Muga Negrini’ based on similarity with our client’s earlier trademark ‘Muga’ registered for identical goods in class 33: wines.

The opposition was rejected. The opposition division decided the signs are not similar enough for a likelihood of confusion to be found among Romanian consumers, in spite of the goods being identical. The opponent decided to file an appeal and this was admitted. The appeal commission found that the signs are similar, the goods are identical and there is a likelihood of confusion.

The applicant contested the decision before the Bucharest Court of Law, which decided to admit the applicant’s action not on merits but based on procedural irregularities before the appeal commission.

If the court had given a decision on merits the case would have ended there. Recourse was still possible but the prior rights owner decided to acknowledge the findings of the court with respect to the procedural irregularities during the administrative appeal. As a consequence the new trademark ‘Muga Negrini’ with design was registered.

The conflict continues

However, the conflict between the marks was not settled in our client’s opinion, who decided to start an invalidation action based on the same earlier trademark. So an invalidation action meant to settle the conflict between ‘Muga’ versus ‘Muga Negrini’ with design was initiated before the Bucharest Court of Law. As expected, one of the main defences of the new trademark owner was to claim the inadmissibility of the invalidation action.

The defendant sustained that the opposition proceeding and the invalidation proceeding are alternative ways of action to hinder the registration of a new trademark application.

Once one chooses one way of action one is hindered from subsequently choosing the second way of action in accordance with the civil law principle ‘electa una via, non datur recursus ad alteram’. Our defence to these inadmissibility claims was based on the European case law with respect to res judicata which established that res judicata attaches only to final judicial decisions but not to administrative decisions which emerge from the IP offices, unless otherwise provided in the corresponding legislation.

Various reasons support this approach in this particular domain: interpretation of the existing legal provisions that requires such conclusion; administrative proceedings are simpler, quicker and cheaper; they intervene in the first stage of acquiring a trademark when its impact on the market is still unknown; and the existing precedent that has been satisfactory for the interested subjects.

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