BAD FAITH
Te defendant, ACT, is a small Romanian automotive company specialising in spare parts for vehicles.
On February 27, 2006, ACT filed a trademark application with the Romanian Patent and Trademark Office using an identical graphical form with the one currently used by the rightful owner, but in black and white, as shown below.
the idea of joining the mark (Takko) and the word Fashion together with the logo.
• Te bad faith is equally proven by the fact that ACT applied for registration at the same time for marks belonging to other foreign companies. Tat is considered to prove the intention of the defendant to obtain IP rights by prejudicing the interests of other persons.
At that time CTMs were not valid in Romania and the international trademarks did not cover Romanian territory, so the application passed the ex officio examination of the Romanian office and matured into a registration.
At the end of 2008, ACT wrote a warning letter to the Romanian subsidiary of Takko asking it to cease immediately the use of the mark, based on the rights of the freshly obtained trademark registration for ACT’s Takko.
Takko Germany reacted promptly by lodging, in January 2009, a claim for cancellation in bad faith, a claim that was admitted by all three tiers of justice: first instance, appeal, and final appeal, respectively.
Te argument of the rightful owner in support of the cancellation for registration in bad faith was essentially the following:
• Takko had registrations in other jurisdictions of Europe for many years. Te international register and the CTM register are open to the public, so that anyone can see the registered trademarks; additionally ACT had a trademark attorney who could have given good advice on this matter.
• ACT was aware of the way the German Takko marks were actually used, either from the Internet or by seeing shops in neighbouring countries (in particular Hungary).
• ACT was aware that the mark was not registered in Romania at that time (2006).
• ACT as a company was neither producing nor commercialising clothing articles at that time, being a small company selling spare parts for vehicles.
• ACT applied in bad faith for registration of the mark Takko with the purpose of removing the rightful owner as a competitor from the market; the notification sent in December 2008 was the proof in this respect.
• Te graphical form of the application as filed is identical with the mark actually in use by the claimant, without any logical explanation for the ‘coincidence’.
• ACT filed in the same period for the marks of other known German companies, such as ‘Rossmanversand’, or ‘Media Markt’.
ACT’s main line of defence was that the Romanian Patent Office had granted the registration, alleging that the burden of correct application of the law should be on the office. In reality, at the time when the application was filed, there was no valid registration in Romania for Takko marks, the international registrations covering other jurisdictions and the CTMs entering into force in January 2007. ACT tried numerous other strategies to defend itself, among others by ‘producing’ some evidence of use of the mark Takko on clothing articles.
Te court of first instance ruled in favour of granting the request for cancellation of ACT’s Romanian trademark registration Takko, a decision that was upheld by the Court of Appeal and the High Court. In essence the arguments in favour of cancellation were as follows:
• Te defendant ACT had hired a trademark attorney who could have carried out searches for prior rights by simply accessing the corresponding registers online.
• Te defendant ACT did not carry on activities of selling clothing at the time of filing the application for Takko Fashion, the only activity recorded in the Register of Commerce of that time being commercialisation of spare parts for vehicles. Te contract for buying a limited number of clothes from a third company was considered irrelevant.
• Tere is phonetical, visual and conceptual similarity of the signs: the sign used by the claimant (Takko Germany) and the mark applied for registration by the defendant. It is hard to believe that the sign applied for registration as a mark (by ACT) can be the creation of this company, given the identity and
108 World Intellectual Property Review Annual 2012
www.worldipreview.com
Te decision is important because it shows that it is not necessary to prove relationships between the parties prior to the filing of an application, in order to establish bad faith. Additionally, it is much easier to determine whether there are prior rights, given the fact that the registers of trademarks are available online.
Further, the decision shows that, in order to establish bad faith, the judge looks at the global picture of the actions taken by the owner of the mark to be cancelled. In this case, the judge decided that the field of the mark applied for (clothing) was different from the field of activity where the registrant did business at the time of filing the application, namely spare parts, and rejected as irrelevant sporadic acts of commerce with clothing articles made aſter said date of filing.
Within this ‘global picture’ the judges looked at other evidence that was not part of this file, namely the filing of applications for marks belonging to other persons, that completed the profile of the defendant as acting in bad faith.
We hope this decision will have a deterrent effect on persons seeking to register marks rightfully owned by others. n
Raluca Vasilescu is a partner at Cabinet M. Oproiu. She can be contacted at:
raluca@oproiu.ro
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