The Intellectual Property Department of SCPA CAMPAN & TIMONEA has achieved a new success in the field of trademarks, through the final dismissal of an application for cancellation of a European trademark, filed by the claimant against our client, the defendant in the case.


Background of the case

In the present case, our client, P.G. SRL, produces and markets ice cream in several cities across Romania. To this end, on 05 June 2018, it applied for protection of its brand with EUIPO (the European Union Intellectual Property Office). As a result of this application, it obtained European Union trademark certificate no. 017912375, which grants protection at EU level, in all Member States of the European Union, including Romania, until 05 June 2028.

The trademark was registered in Class 30 of the Nice Classification, namely for:
Ice, ice cream, frozen yogurt and sorbets; sugar, natural sweeteners, sweet glazes and fillings, apicultural products.

Subsequently, on 13 August 2018, the claimant filed a trademark application with OSIM (the Romanian State Office for Inventions and Trademarks) for a designation extremely similar to that of our client, seeking protection in Romania for products and services in the following Nice classes:

  • Class 30 – Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery products; edible glazes; sugar, honey, molasses; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice (frozen water);

  • Class 35 – Advertising; business management; business administration; office functions;

  • Class 43 – Food and drink services; temporary accommodation.

In order to obtain registration of its trademark for all the requested classes, the claimant brought an action before the Bucharest Tribunal, seeking the annulment of the European trademark registered under certificate no. 017912375, invoking the alleged infringement of its prior rights, namely its trade name, as well as the existence of a likelihood of confusion between the two companies. In law, the claimant relied on Article 6(1)(b) and Article 6(3)(e) of Law no. 84/1998.


Our arguments

We filed a statement of defence requesting dismissal of the action as unfounded, based on several arguments, summarized below.

With regard to the claimant’s alleged prior trade name, we argued that, in this case, a trade name cannot take precedence over a trademark registered at European level and cannot infringe rights registered as a trademark.

A contrary interpretation would render trademark registration offices meaningless, if at any time a person claiming a trade name could oppose it to a registered EU trademark and claim priority over it.

Such an approach would strip trademark legislation and institutions of their substance and practical applicability. Their very purpose is to protect diligent right holders who apply for registration of their trademarks in order to secure their business activity. The mere use of a trade name in commercial activity cannot, under any circumstances, be equated with a registered trademark right enforceable erga omnes.

We also pointed out that the claimant used the alleged trade name solely to sell bakery products and food items in supermarkets. The claimant never promoted itself on the market as an ice cream producer, let alone as a gelateria or similar business.

In this respect, OHIM (Office for Harmonization in the Internal Market) case law has established that a sign conferring an exclusive right over an entire national territory is not, in itself, sufficient to prove that the right extends beyond local significance, this being a criterion specific to EU law
[T-318/06–T-321/06 – Moreira da Fonseca/OHIM – General Óptica; T-579/10 – macros consult v OHIM – MIP Metro (makro); T-506/11 – Peek & Cloppenburg/OHIM – Peek & Cloppenburg].

Legal doctrine holds that the fact that a trade name or emblem is primarily intended for local use is not sufficient to prevent the prohibition of use of a trademark whose registration is subsequently sought, unless the use of the distinctive signs on the same market, in connection with products or services within the same field of commercial activity (classified identically under CAEN codes), is likely to give rise to confusion among consumers on the local market.

In support of opposition to trademark registration, the holder of a trade name or emblem must prove the existence of a competitive relationship between itself and the applicant for the later trademark registration, which OSIM assesses by reference to the object of activity of the trade name holder and the classes of goods or services for which trademark protection is sought.

In the present case, our client caused no prejudice to the claimant and did not infringe any of its prior rights.

Regarding the alleged likelihood of confusion, we argued that such a risk could only be discussed if both parties operated on the same market—namely, the preparation and sale of ice cream. Only if both companies were active on the same market, both in terms of products and geographical scope, could a likelihood of confusion potentially arise. However, given the actual circumstances, such confusion was clearly non-existent, as ice cream products and bakery goods cannot be confused by consumers.

From a trademark law perspective, what matters is the classes for which protection has been obtained. As shown above, our client obtained protection in Class 30 exclusively for ice cream–related products, while the claimant sought protection in Classes 30, 35, and 43. With respect to Class 30, due to our client’s earlier trademark, the claimant obtained protection only for coffee, tea, cocoa, cereals, bread, yeast, salt, spices, and similar products.

We therefore requested the court to find that our client operates solely in the field of ice cream production and sale, while the claimant commercializes bakery and food products, with no connection to our client’s activity. Consequently, there could be no likelihood of confusion between the trademarks, as they protect distinct goods and services.


The court’s decision

By Civil Judgment no. 1544, the Bucharest Tribunal dismissed the claimant’s action, a decision subsequently upheld by Civil Decision no. 1013A of the Bucharest Court of Appeal.

In support of its ruling, the court held, inter alia:

“With regard to the trade name, it represents the company name and is therefore mandatory for carrying out a commercial activity. A registered trademark, on the other hand, is not a mandatory requirement for establishing a company, but rather has an optional character. Through a trademark, its holder gains the certainty that no other person will market identical or similar products or services under the same name.

Thus, it is important to note that the trade name individualizes the trader, whereas the trademark individualizes the products or services offered by the trader in relation to those of competitors. The court notes that trademark registration may be annulled if the evidence shows that the trade name was registered and used in commercial activity prior to the trademark registration and that the trademark was subsequently chosen by a market competitor so as to include the prior trade name.

It is also found that the two companies operate on different markets, with no equivalence between the products they manufacture—bakery products in the claimant’s case and artisanal ice cream in the defendant’s case. The products are not identical, which leads to the conclusion that the two companies are not competitors on the same market.

(…)
There is also a difference in the consumption patterns of these products. Furthermore, the verbal characteristics of the defendant’s trademark are capable of distinguishing between the claimant’s bakery products and the defendant’s artisanal ice cream products, which precisely reflects the function of a trademark to distinguish the goods or services of one undertaking from those of others. Therefore, in light of all the above, the court dismisses the action as unfounded.”


Conclusion

We welcome the court’s solution and the fact that both the Bucharest Tribunal and the Bucharest Court of Appeal endorsed our legal reasoning, reaching the correct outcome in light of the applicable legal provisions.

Should you wish to learn more about trademarks or intellectual property rights in general, our specialists are at your disposal.

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