ROMANIA
THE SAFETY OF UNREGISTERED MARKS
To what extent can you count on an unregistered trademark? Raluca Vasilescu investigates the situation in Romania.
U
nregistered marks have a long tradition in some European jurisdictions, while in others they are still at their early stages.
Romania is one of the countries where
unregistered marks were recognised as a distinct kind of prior right only by amendments made to the national law in 2010.
Legal provision states that a mark can be denied registration or, if registered, can be cancelled, if there are earlier rights arising from an unregistered mark or another sign used in commercial activity before the fi ling date or the subsequent mark, and if that unregistered mark or unregistered sign confers to the owner the right to forbid the use of the later mark.
Neither the law nor the implementing regulation clarify under what circumstances the unregistered mark confers to the owner the right to forbid use of the later mark. However, case law is expected to shed some light on the matter.
In a decision delivered in December 2013 by the Board of Appeal of the Romanian State Offi ce for Inventions and Trademarks (OSIM), a later
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mark was denied registration for confl ict with an earlier unregistered right, as follows.
The facts
In May 2007, the Romanian company Zonal Media obtained a licence for regional TV channel Gorj TV, ‘Gorj’ being the name of a county. T e channel began broadcasting at the end of June 2007 and was watched widely in Gorj county. Zonal Media sold the business to Media Video Centre in 2012 and the channel continues to broadcast today, with the same high audience fi gures.
Meanwhile, Zonal Media had registered the domain name
gorjtv.ro in 2006 with the national registrar RoTLD.
In November 2011, a Mr Raitaru, who had attempted unsuccessfully to enter a business relationship with the owners of the TV channel, applied to register the word mark ‘Gorj TV’ for telecommunication services in Class 38; advertising and management of the business in Class 35; and education, training, entertainment, cultural and sport activities in Class 41.
World Intellectual Property Review Annual 2014
Media Video Centre duly fi led an opposition against the word mark ‘Gorj TV’ at the end of 2011 on several legal grounds, among which were: a) confl ict with earlier rights arising from a domain name; b) earlier rights from an unregistered mark; and c) confl ict with a famous mark.
T e opponent provided evidence that the mark had been in use continuously since mid-2007 right up to present day, providing fi ling surveys, press cuttings and advertising contracts. T e opponent also claimed that the mark had already become famous by the date of publication of the later mark, ie, November 2011 for the relevant people, defi ned as the people of Gorj county.
In reply, the applicant challenged the legal grounds based on the use of ‘famous mark’, arguing that the TV channel has a local audience, whereas the relevant public would be the public interested in watching TV from all over the country.
T e Board of Appeal admitted the opposition and thereby denied registration to the later mark. T e board accepted that Gorj TV had acquired earlier rights through an unregistered mark by
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