CHINA OPPOSITION TRADE NAMES
Article 8 of the Paris Convention specifi es that “A trade name shall be protected in all the countries of the European Union without the obligation of fi ling or registration, whether or not it forms part of a trademark.”
Various national laws established specifi c rules for deciding the issue, but when it comes to European jurisdictions, we are still far away from a uniform approach.
Bibas Kſt is a Hungarian company specialising in professional kitchen machines, including coff ee machines for use in restaurants and bars. In April 2008, it applied for a trademark in Romania according to the national trademark law. T e application was for ‘Bibas Professional and device’ for a selected list of goods in Class 35: “T e bringing together, for the benefi t of owners of kitchen machines of large sizes and of coff ee machines, except for their transport enabling customers to conveniently view and purchase the same”. T e trade name Bibas Kſt has been registered with the Hungarian Registrar of Companies since 1991.
In 2002 a Romanian company, Bibas SRL, was founded. T e name Bibas SRL was selected on
T e 2008 application for ‘Bibas’ was published in May 2010, when the new Trademark Law came into force abolishing the ex offi cio citations for prior rights.
Bibas SRL lodged opposition against the
Hungarian company’s 2008 application for ‘Bibas Professional’, quoting several types of prior rights: the earlier 2007 application for ‘Bibas’, and the trade name Bibas of November 1994.
T e opposition was admitted following a summary examination.
In February 2011, Bibas Kſt lodged an appeal with the Re-Examination Commission of
the
Romanian Patent Offi ce (OSIM), arguing in essence as follows:
• T e appellant’s trade name Bibas Kſt (1991) predates the opponent’s (1994); and
• Bibas Kſt was a shareholder in the Romanian company Bibas SRL and a commercial relationship had existed in the past between the two companies.
Romania and Hungary are both signatories to the Paris Convention, and the trade name Bibas Kſt (including its long version in Hungarian) dates from 1991, earlier than the Romanian trade name Bibas. Moreover, the Romanian company had another name in 1994 at the time of its founding. T e trade name Bibas SRL dates in fact from 2002 and not from 1994.
purpose to show the commercial relationship between the Hungarian and Romanian companies. Bibas Kſt was a shareholder in Bibas SRL.
Over the years, something went in the cooperation
of wrong the fi rms. T e
Romanian company Bibas SRL applied for registration in November 2007 for a mark, whose pictorial device is represented below.
Bibas SRL argued as follows:
• T e association with Bibas Kſt was decided in early 2002, when the latter company became a shareholder. Later on, some shares were sold to Romanian shareholders in early 2005, with the last ones being sold in October 2007, when the cooperation with the Hungarians offi cially ceased;
• The application for the mark ‘Bibas’ in Classes 11 and 20 was made in November 2007, after cooperation with the Hungarian company had ceased; and
T e list of goods includes Class 11: “Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes”, and part of Class 20: “Furniture”.
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• T e structure of ownership and the fi nal assignment of the shares to the Romanian company should not have an impact on the anteriority of the trade name Bibas.
T e OSIM Board of Appeal admitted the appeal based on the following motivation:
• Article 8 of the Paris Convention applies in the sense of recognising the earlier rights of Bibas Kſt in having a trade name in Hungary since 1991; therefore the Romanian company does not have any earlier trade name right; and
• T ere is another applicable legal provision, namely Articles 6(1) and 6(2) septies of the Paris Convention, according to which the proprietor of a mark (Bibas Kſt ) is entitled to oppose the registration of a mark applied for by his agent or representative (Bibas SRL).
Bibas SRL’s earlier mark was not retained as a prior right, since it referred to products other than the ones specifi ed in the later application.
In December 2011, Bibas SRL lodged an appeal with the Municipal Court of Bucharest, criticising the earlier decision as follows:
• T e interpretation of Article 8 of the Paris
Convention should be made nationally, since the Romanian Registrar of Companies admitted the name Bibas SRL aſt er verifying that no other identical name was registered in Romania; and
• T e provisions of 6(1) and 6(2) of the Paris Convention are not applicable since the Romanian company was not subordinate to the Hungarian one and the volume of transactions between the parties was low.
T e court delivered a decision in June 2012, upholding the decision of the OSIM Board of Appeal. In essence, the arguments were as follows:
• T e correct application of Article 8 of the Paris Convention should be completed by adding Article 2(1) of the same convention, according to which: “Nationals of any country of the EU shall, as regards the protection of industrial property, enjoy in all the other countries of the EU the advantages that their respective laws now grant […] provided that the conditions and formalities imposed upon nationals are complied with.”
• According to a condition imposed upon nationals: “T e registration in the Trade Name Register is opposable to third parties as of the day when the mention is entered into the Register […]. T e person requesting such registration— in this case Bibas Kſt —can not oppose third parties’—in this case Bibas SRL—acts or deeds that are not registered, except for the case proof is adduced that said acts or deeds were known by third parties (Bibas Kſt ).”
World Intellectual Property Review September/October 2012 87
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