Prohibition of trademark use based on absolute grounds for refusal

This chapter considers whether it is possible to prohibit – and possibly penalise – the use of trademarks that infringe the absolute grounds for refusal of registration set out in the Law on Trademarks and Geographical Indications (84/1998), where those trademarks are nonetheless in use.

Absolute grounds for refusal

Under the Trademarks Law, the following signs may not be registered or – if registered – may be cancelled:

• signs that cannot be represented graphically or do not distinguish the goods or services of one enterprise from those of other enterprises (ie, that do not fulfil the definition of a ‘trademark’ under Article 2 of the Trademarks Law);
• marks without distinctive character;
• marks that consist exclusively of signs which designate the kind, quality, quantity, intended purpose, value, geographical origin or date of production of the goods or services;
• marks which consist exclusively of signs that have become generic;
• marks consisting exclusively of a shape:
  • imposed by the nature of the goods;
  • which is necessary in order to obtain a technical result; or
  • which gives substantial value to the goods;
• marks which mislead the public as to the nature, quality or geographical origin of the goods or services indicated;
• marks which include a misleading geographical indication;
• marks which include a geographical indication identifying wines or spirits which do not originate in the place indicated;
• marks that are contrary to public order or morality;
• marks which include the likeness or surname of a person of repute in Romania, without consent;
• marks which include reproductions of armorial bearings, flags, state emblems, signs, official seals of control and warranty or coats of arms belonging EU members or countries governed by Article 6ter of the Paris Convention, without consent;
• marks which include reproductions of flags, signs, logos, initials or names belonging to international intergovernmental organisations governed by Article 6ter of the Paris Convention to which any EU member is party, without consent;
• marks which contain signs of high symbolic value – in particular, religious symbols; and
• marks including badges, emblems, coats of arms and heraldic devices not covered by Article 6ter of the Paris Convention, without consent.

Prohibitions on use

The grounds for refusal listed above affect the use of trademarks in the following ways.

Undistinctive, descriptive and generic signs

Article 23 of the Trademarks Law specifies that if a non-essential element of the trademark has no distinctive character and could create doubt as to the scope of trademark protection, the Romanian Patent and Trademark Office (OSIM) will request the applicant to file a statement disclaiming the exclusive right to that element within two months of notification. The statement will be published along with the registered trademark. Unless this statement is filed, the application for registration will be rejected.

Therefore, trademarks which are unregisterable because they lack distinctive character or are merely descriptive or generic may be used by any interested party and no party may prohibit such use.

Loss of distinctiveness

An initially distinctive registered sign may subsequently lose its distinctiveness, resulting in revocation of the owner’s rights.

Under Article 46 of the Trademarks Law, any interested party may apply to the Bucharest Tribunal for revocation of trademark rights if, as a result of the action or inaction of the rights holder, the trademark has become the common name in trade for the goods or services it represents.

Useable shapes

The following signs may also be used by any interested parties and nobody may prohibit such use:

• a shape imposed by the nature of the product;
• a shape of the product which is necessary to obtain a technical result – however, if the shape is subject to a valid patent, it may be used only by the owner or with the owner’s consent; and
• a shape which gives substantial value to the goods – however, if the shape is subject to a valid registered design, it may be used only by the owner or with the owner’s consent.

Deceptive trademarks

Under Article 46 of the Trademarks Law, any interested party may apply to the Bucharest Tribunal for revocation of trademark rights if, as a result of use by the rights holder or with the rights holder’s consent, the trademark has become liable to mislead the public – particularly as to the nature, quality or geographical origin of the goods or services in respect of which it was registered.

The Consumption Code (296/2004) provides the basis for legislation on the use of deceptive signs. Article 5 of the code defines its objectives as follows:

• protecting consumers against the risk of purchasing goods or services that could endanger their life, health or security or affect their legitimate rights and interests;
• promoting and protecting consumers’ economic interests; and
• providing consumers with full, correct and accurate information on the essential characteristics of goods and services on the market, thereby enabling them to make decisions which accord as consistently as possible with their needs.

To the same end, Article 4(1) of the Law on Consumer Protection (21/92) prohibits the trade of goods or services which may threaten the life, health or safety of consumers when used under normal conditions. Further, Article 2.9(c) defines a ‘safe product’ as one which poses no risk or minimal risk when used in normal conditions. A high level of protection must exist for the health and safety of consumers, taking into account the product’s appearance, labelling, instructions for use and any other information provided by the manufacturer.

It follows that the use of deceptive trademarks may be prohibited.

Geographical indications

Regarding geographical indications, the following provisions must be considered:

• Under Article 73(1) of the Trademarks Law, an association of producers carrying out activities in a particular geographical area may apply to OSIM to register a geographical indication for certain products. Under Article 77(1), if the application meets the legal requirements, OSIM will register the geographical indication in the Register of Geographical Indications and grant the right of use to the applicant. Under Article 77(2), the right to use the geographical indication will belong to the members of the association which registered it.
• Under Article 79, registration of a geographical indication in the name of an association of producers may not hinder the registration of the same indication by any other association which meets the same Article 73 provisions.
• Under Article 85, at any time during a geographical indication’s term of protection, any interested party may apply to the Bucharest Tribunal for cancellation of the registration if it has been registered contrary to Articles 75 and 76. Further, if sale of the product fails to comply with the quality criteria and the specific features of the products of the region to which the geographical indication refers, the central specialised public authority (or any other interested party) may apply to the Bucharest Tribunal for revocation of the geographical indication.
• Under Article 82, non-authorised parties may not use a geographical indication or imitation thereof, even if the true origin of the products is shown or if terms such as ‘kind’, ‘type’ or ‘imitation’ are added. Further, parties authorised to use a geographical indication for wines or spirits may prohibit third-party use of such indication for wines or spirits that do not originate from the region suggested by that geographical indication – even if the true origin of the product is expressly mentioned or the geographical indication is used in a translated form or accompanied by terms such as ‘kind’ or ‘type’.
• Under Article 83, the central specialised public authority may, ex officio or at the request of any interested party, examine the products marketed under a registered geographical indication.

Penalties for infringement and deception

The unauthorised performance of the following acts constitutes an offence punishable by three to 36 months’ imprisonment or a Lei50,000 to Lei150,000 fine:

• trademark infringement;
• marketing goods under a trademark that is identical or similar to a trademark that has been registered for identical or similar goods, causing prejudice to the owner of the registered trademark; or
• marketing goods under a geographical indication stating or suggesting that the product concerned originates from a geographical region other than its true place of origin, with the intent of misleading the public.

Therefore trademark law penalises the deception of consumers through the use of geographical indications that fail to state the true place of origin of the goods.

Signs contrary to public order or morality

Law 107/2006 prohibits organisations and symbols with a fascist, racist or xenophobic character and the glorification of persons found guilty of committing crimes against peace and humanity.

Article 2(a) of the law defines a ‘fascist, racist or xenophobic organisation’ as any group formed by three or more persons, temporarily or permanently, promoting:

• a fascist, racist or xenophobic ideology;
• ethnically, racially or religiously motivated hatred and violence;
• the superiority of certain races and inferiority of others;
• anti-Semitism;
• incitement to xenophobia;
• the use of violence to change the constitutional order or democratic institutions; or
• extreme nationalism.

This definition includes organisations with or without legal personality, political parties and movements, associations, foundations and commercial entities.

Article 2(b) defines ‘fascist, racist or xenophobic symbols’ as flags, emblems, badges, uniforms, slogans, gestures or any other symbols that promote the ideas, concepts and doctrines described above.

Name or likeness of person with repute

Under the Constitution, any person is entitled to the rights to his or her own image. When exercising this right, a person may prohibit or prevent any reproduction whatsoever of his or her physical appearance or voice, or the use of such reproduction.

Further, Article 998 of the Civil Code (as amended) imposes on the responsible party the liability to remedy any act that causes prejudice to another person.

Official signs protected under Paris Convention

Article 6ter of the Paris Convention prohibits the unauthorised use of armorial bearings, flags and other state emblems of EU members – including official signs and seals indicating control and warranty – and the imitation of any heraldic sign.

Other official signs

The Law on the State Coat of Arms and Seal (102/1992) defines Romania’s state coat of arms and seal. Chapter 3, Article 10 stipulates that public authorities may design their own armorial signs and seals. County, municipality, city and commune armorial bearings must be approved by the government, by application to the National Commission for Heraldry and Genealogy.

Where a mark includes an emblem that designates a territory from which the goods do not originate, use of the mark can result in consumer deception. In this case, besides the authority managing the use of the mark, any consumer may submit an application to prohibit its use pursuant to Article 5(f) of the Trademarks Law.

However, if the goods originate from the place designated by the mark, consumers are not deceived. Further, under Article 6ter, Item 8 of the Paris Convention, citizens who are authorised to use the state emblems, signs and seals of their own country may use them even if they are similar to those of another country.

The unlawful wearing of decorations, uniforms or distinctive signs of a state body is punishable by one to three months’ imprisonment or a fine.

Under Article 6ter, Item 2 of the Paris Convention, the use of official signs and seals indicating control and warranty is prohibited only in cases where the marks in which they are incorporated are intended to be used on identical or similar goods. In this case, any consumer may request prohibition of the sign’s use pursuant to Article 5(c) of the Consumption Code (296/2004).

Signs of high symbolic value

Articles 1 and 2 of Law 107/2006 may be relied on to obtain a final decision prohibiting the use of religious symbols.

Conclusion

In conclusion, trademark law punishes the unlawful use of registered trademarks (ie, infringement), the use of trademarks which cause prejudice to rights holders and deception of consumers through the use of misleading geographical indications.

Rominvent SA

Ermil Pangratti Street 35

1st Floor Sector 1

Bucharest 011882

Romania

Tel +40 21 231 2515

Fax +40 21 231 2550

Web www.rominvent.ro

Ioana Dragulin
European trademark attorney
[email protected]

Ioana Dragulin graduated from the Dimitrie Cantemir University Faculty of Law (Bucharest). She has been active in the industrial property field since 2002. Ms Dragulin advises clients and represents them in counterfeiting and trademark infringement cases before the Romanian Trademark and Patent Office, customs authorities and police departments. Ms Dragulin is a European trademark attorney and a member of the Romanian National Chamber of Industrial Property Attorneys.