TO BE OR NOT TO BE DESCRIPTIVE
JURISDICTION REPORT: ROMANIA
Raluca Vasilescu
Cabinet M. Oproiu
Romania’s national Trademark Law contains provisions on the absolute grounds for refusing an application that is very similar to those in most European countries. For example, an application for a mark should be refused if:
• The related sign is devoid of distinctive character, or
• It consists exclusively of signs that may serve in trade to designate the kind, quantity, quality, value or other characteristics of the goods or services, or
• The application consists exclusively of a sign or indication that has become commonplace in current language or in established practices, or
• The application consists exclusively of the shape of the goods or said shape is necessary to obtain a technical result or gives substantial value to the goods.
Romania’s patent office can ask the applicant to give a disclaimer for a part of the mark, if it is devoid of distinctive character. Te disclaimer is published together with the application.
Tere is a growing number of applications for marks that tread a fine line between being distinctive and devoid of distinctive character, several of which have been published in the National Bulletin and have passed an examination on absolute grounds. Tere are several different categories of application:
1. Applications consisting of one or several words that are both descriptive and accompanied by a pictorial element, with or without a disclaimer for the words:
a) ‘Expert Digital’, plus an image for goods in classes 9, 11, 35, 36, 37 and 39, with disclaimers for ‘expert’ and ‘digital’. Te word digital serves in the trade to designate the ‘kind’ for many of the goods in class 9, whereas the word expert designates the ‘quality’ for all the classes concerned.
b) ‘Metallic Style’ (with special script, no pictorial element and no disclaimer) for metallic doors in class 6 and advertising and management services in class 35. Te expression metallic style exclusively designates a quality of the goods in class 6, whereas the word metallic exclusively designates the kind for the same goods.
c) ‘Taxi Service Colentina’ plus an image (Colentina is a borough of Bucharest) for taxi transport services in class 39. A disclaimer is given for Taxi Service and Colentina. Obviously, the word part of the mark consists exclusively of a sign or indications that have become customary in the course of trade.
All these cases concern highly descriptive marks, at least for part of the goods, and a very weak protection conferred by the registration. In all of
52 World Intellectual Property Review March/April 2010
“ROMANIA’S PATENT OFFICE CAN ASK THE APPLICANT TO GIVE A DISCLAIMER FOR A PART OF THE MARK, IF IT IS DEVOID OF DISTINCTIVE CHARACTER. THE DISCLAIMER IS PUBLISHED TOGETHER WITH THE APPLICATION.’’
the cases, nearly the total protection conferred by the mark is limited to the pictorial element or the special script. So while the applicant will most probably obtain the Certificate of Registration, in practice, it will be very difficult to enforce such weak marks. For the holders, it is an illusion that they hold a trademark registration. It would have been much better if the patent office had denied protection.
2. Applications comprising slogan marks consisting of expressions that have become commonplace in the language
a) Te ‘De ţară’ wordmark (which means from the countryside) for goods in classes 31, 33 and 39 designates the ‘origin’ of the goods. Indirectly, it also designates the quality of the goods in classes 31 and 33, and provides an indication that has become customary in the course of trade, because most Romanian consumers associate this expression with goods that are produced by individual farmers and/or are homemade in the countryside.
b) ‘Datina Retete Mostenite’ (which means traditionally inherited recipes) for flour and products made from flour, such as bread pastry in class 30, raises similar issues.
Te slogan marks are usually used in trademark holders’ advertising campaigns, many of which have a short life compared to trademarks. It is dangerous to aggressively block expressions used in common language by commercial undertakings or individuals on a large scale, as enforcing unlawful registrations would force third parties to spend time and money filing invalidity claims. Presuming that invalidity claims are lodged on the basis that the mark in question consists of a commonplace sign, it may be quite difficult to produce evidence, as the expressions are normally used by individuals rather than in the course of trade. Tis presents problems for ‘converting’ evidence into a acceptable form for the courts.
raluca@oproiu.ro
www.worldipreview.com
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