International report - High Court finds TOTAL cannot stand alone in Romania 10 Oct 12
Drakopoulos Law Firm - Romania
Recently, the High Court of Cassation and Justice unequivocably settled a matter regulated by Romanian law, yet subject to interpretation: using a standalone trademark combined with another trademark does not constitute use of the standalone trademark.
In a litigation that lasted more than three years, GlaxoSmithKline requested cancellation in Romania of the international trademark TOTAL, owned by Total France, due to, among other things, the lack of use of the trademark for five years.
Total France argued that TOTAL was used in combination with the trademark COLGATE, by virtue of a licence agreement between Total France and Colgate-Palmolive, whereby the latter was permitted to use TOTAL, albeit exclusively in combination with COLGATE.
Initially, the Bucharest Court of First Instance and the Bucharest Court of Appeal accepted this defence; however, the High Court of Cassation and Justice rejected the argument and reversed the earlier decisions.
The court took into account the fact that Colgate-Palmolive had also registered the trademark COLGATE-TOTAL; therefore, use of the single trademark COLGATE-TOTAL (as opposed to use of the two trademarks COLGATE and TOTAL, as argued by the defendant) did not prove use of the trademark TOTAL. Moreover, there were differences between the appearance of the TOTAL mark as registered with the Romanian State Office for Inventions and Trademarks by Total France (which uses the colours red, white and gold in certain proportions), and the TOTAL mark as used as part of the COLGATE-TOTAL trademark (which uses the colours white and gold colours only in different proportions).
Furthermore, the use of the TOTAL mark in combination with the COLGATE mark, taking into account that COLGATE is the dominant element in the COLGATE-TOTAL mark, as well as the differences between the mark registered by Total France and that used in COLGATE-TOTAL, essentially stripped TOTAL of its distinctive character.
In its ruling, the court also considered the provision of the Office for Harmonisation in the Internal Market Manual for Opposition dealing with proof of use of a trademark, which stipulates that a trademark should be used with the colours it was registered with and only insignificant nuances and colour intensity variations qualify as use that does not alter the distinctive character of such trademark.
As a result, the High Court of Cassation and Justice admitted GlaxoSmithKline’s second appeal and cancelled the TOTAL mark in Romania, revoking all Total France's rights in respect of such mark.
Even if the court's decision does not create a mandatory precedent for other courts in Romania, it is of great practical import since it may serve as a guideline for dealing with similar cases in future.
Therefore, mark owners should be alert at all times, taking measures to maintain actively the use of their trademarks in Romania, rather than relying on licence agreements under which their trademark is used in combination with another trademark.
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