ROMANIA
The lesson: good news or bad news?
At first sight, there is nothing spectacular about this case. However, it is important because of the context and the ruling.
Gorj is a small county in terms of population, with fewer than half a million people compared with around 20 million in Romania as a whole. Given that most TV channels have internet pages, where they post news and other information of interest, one can presume that the audience is somewhat larger than 2.5 percent of the population. It might include, for example, people born in that county and living in other parts of Romania. However, even the highest estimates suggest that no more than twice the number of the people in Gorj might actually be interested in the Gorj TV channel.
Tis is why a ruling that the holder of a sign used in a small area of Romania, through the use of a right conferred by a trademark, can oppose the registration of later sign is undoubtedly a significant change in the practice of the OSIM— even though it is true that circumstances were favourable because the signs were identical and the services were similar.
“THE BOARD ACCEPTED THAT GORJ TV HAD ACQUIRED EARLIER RIGHTS THROUGH AN UNREGISTERED MARK BY CONTINUOUS USE IN A TERRITORY BEFORE THE DATE OF DEPOSIT OF THE LATER MARK.”
continuous use in a territory before the date of deposit of the later mark, those rights allowing them to forbid third parties to register an identical or similar mark for identical or similar services.
Te board also agreed that Gorj TV had earlier rights arising from a domain name. Te grounds related to ‘famous mark’ were not taken into consideration given that the evidence was not considered sufficient to prove notoriety.
www.worldipreview.com
Te good news about this approach is that unregistered rights acquired through use are recognised in opposition proceedings. However, one could also look at the decision the other way round and ask whether it is fair that the use of a sign in a small territory in terms of population is sufficient to allow the proprietor to acquire the right to forbid use of a later similar sign for similar or identical goods irrespective of the size of the territory in which the later sign would actually be used.
Te case is interesting because it raises the problem of assessing the use of a national trademark that involves new technology. Traditionally, the evidence submitted to OSIM comprised press cuttings, contracts and licences. Te use of a mark on the internet is hard to quantify for several reasons:
• Te number of visits to a website is not per se evidence that the mark that appears on the site is perceived by the public to be a trademark and not just part of the text; and
• Even if there is a system for counting the visits to the website, there is no reliable evidence in an easy-to-read format about where the people looking at the website are located. Use and notoriety are strictly related to national territory in the legal texts.
Perhaps the definition of national territory for World Intellectual Property Review Annual 2014 83
the purpose of assessing use and notoriety should be changed. For example, there are roughly 900,000 Romanians living and working in Spain, according to data published by the Romanian Embassy in Madrid, roughly the double the number living in Gorj county.
Nearly all these Romanians can access Romanian websites and buy products and services bearing Romanian national trademarks. Would the use of a mark for this category of public fall within the scope of the definition ‘use of a trademark in Romania’ as provided by national law?
To conclude, the matter of rights arising from unregistered trademarks acquired through use in a territory needs further exploration to assess what the use is of a national trademark in a national territory in real life, as opposed to the definition in law. Tere is no one single good answer, but this is a subject that needs reflection and discussion.
Raluca Vasilescu is a partner at Cabinet M. Oproiu. She can be contacted at:
raluca@oproiu.ro
Raluca Vasilescu handles patent and trademark matters ranging from prosecution to enforcement. She is a registered Romanian trade mark attorney (1996), community trade mark and design attorney (2007), Romanian patent attorney (1999) and European patent attorney (2003). She has been President of the Romanian National Institute of Patent Attorneys (CNCPIR) since April 2013 and vice- president of the Romanian Group of AIPPI since November 2012. Vasilescu is also a member of the ECTA’s anti- counterfeiting committee (2007), and member of the ECTA council (2008 and 2014), a FICPI member (2000), INTA member (1997), and an EPI member (2003). She was newly re-elected into the ECTA council following the elections in February 2014.
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