TRADE NAMES
“BIBAS SRL’S EARLIER MARK WAS NOT RETAINED AS A PRIOR RIGHT, SINCE IT REFERRED TO PRODUCTS OTHER THAN THE ONES SPECIFIED IN THE LATER APPLICATION.”
• More clearly, the name Bibas Kſt is opposed to the appellant Bibas SRL given the commercial relationship between the two companies, because the appellant Bibas SRL was aware of the commercial name of the respondent Bibas Kſt as registered in Hungary.
Te court held that the Board of Appeal correctly applied the provisions of Article 8 of the Paris Convention for the protection of the commercial name of the respondent Bibas Kſt over the trade name of the Romanian Bibas company. Te court
considered this reason to be sufficient to dismiss the appeal lodged by Bibas SRL and did not proceed to analysis of the second ground, namely the provisions of 6(1) and 6(2) of the Paris Convention.
Te teaching of this decision is the following:
• Te provisions of Article 8 of the Paris Convention that seem to be vaguely defined acquire more substance when combined with provisions of Article 2(1) of the same convention, and with
the national laws covering trade names and trademarks; and
• When a potential opponent is seeking to lodge an opposition based on Article 8 of the Paris Convention, he should check the combination of European and national provisions and consider any possible commercial relationships between him and the later applicant.
In the Bibas case initially, the anteriority of the Bibas trade name on Romanian territory seemed to be crystal clear, but later on, upon a close interpretation of the actual situation and the legal framework, the situation changed dramatically and the opponent not only lost its earlier right to oppose, but is likely to lose even more in the future, namely its trademark and trade name
Raluca Vasilescu’s main areas of practice include patent and trademark matters before the OSIM, prosecution of European patents and CTMs. She is a member of FICPI and ECTA’s Anti- Counterfeiting Committee, and is vice president of the Romanian AIPPI.
once a court has established the anteriority of the Hungarian trade name.
If this decision is not further appealed by the Romanian company, it will become final.
Raluca Vasilescu is a partner at Cabinet M. Oproiu. She can be contacted at:
raluca@oproiu.ro
88 World Intellectual Property Review September/October 2012
www.worldipreview.com
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