Court overturns practice of refusing common shape marks

Following a protracted legal battle, the Bucharest Court of Appeal has compelled the State Office for Inventions and Trademarks (SOIT) to revise its practice of refusing to register trademarks containing common shapes.

A Swiss company filed for registration in Romania of a combined trademark with a figurative element and several claimed colours presented in the form of a gas cylinder. According to Romanian legislation on the standardisation of gas cylinders, certain mandatory technical elements exist in order to ensure safety. Although the shape of the gas cylinder is not among them, various producers and distributors use a similar shape to that illustrated by the standard.

During the registration process SOIT asked the Swiss company to submit a written declaration of a limited claim over the exclusive right to the shape of the gas cylinder, invoking one of the application norms of the Trademark and Industrial Design Law regarding issues of distinction.

The company refused to present such a declaration since the trademark at issue was a combined trademark that had to be considered as a whole when analysing its distinctive character. Moreover, the same company had previously succeeded in registering an almost identical trademark, except for the claimed colours, without providing a limited claim declaration. In the absence of a declaration, SOIT rejected the registration application.

Rejecting the company’s appeal, the SOIT Re-examination Commission considered that submitting a limited claim declaration in the case of trademarks containing common shapes is necessary for two reasons: (i) the public will not perceive the shape as a distinctive sign since it is a usual shape previously prescribed by a standard; and (ii) if an exclusive right over the shape were to be given to a single producer, the mark would create a monopoly over the product, thus contradicting the basic principles of trademark protection.

On first appeal, the Bucharest Tribunal rejected the company’s appeal based on non-compliance with the application norms of the Trademark and Industrial Design Law, even though the law does not provide such grounds for rejecting a registration.

Before the second appeal court, the Swiss company submitted various proofs regarding the successful national and international registration of different trademarks containing the form of a gas cylinder, as well as other common forms or shapes (eg, a perfume bottle, a toothbrush and toothpaste, an apple and a gas pump).

The Bucharest Court of Appeal allowed the appeal by an irrevocable decision and annulled the two decisions issued by SOIT. It sent the case back to SOIT to be examined for registration in compliance with the law.

One of the grounds on which the court admitted the appeal was that the lower instances, including SOIT, had added to the provisions of the Trademark Law with respect to the grounds for rejecting registration (since the application norms cannot contain separate rejection grounds from the law).

More importantly, the court ascertained that severe confusion had occurred between the lack of distinctive character and the usual character of the shape of the sign for which the limited claim declaration was required. A trademark’s distinctive character is to be assessed by considering the trademark as a whole – this is the approach SOIT must take when re-considering the Swiss company’s registration request.