A recent final decision of the Romanian Court of Appeal granted protection in Romania for a mark comprising a figurative element representing the shape of an object, without any disclaimer for the form. The decision is important because it offers hope of an end to the Romanian Patent Office's (RPTO) practice of requesting a disclaimer for the shape of an object, with the consequence that the same shape could be used by any other undertaking in its commercial activities.
The applicant — a large company in the petroleum industry — had commissioned the creation of a new gas cylinder 15 years previously. Over the years, it had applied for various trademarks comprising the shape in different colours, with or without word elements. As it turned out that the new form was very good, an engineering standard was developed comprising all the technical requirements that the recipient should meet (safety regulations, etc.), so that today this form is widely used on the market.
The use of disclaimer
According to the implementing regulations of Romanian Trademark Law, RPTO can ask the applicant to give a disclaimer for those elements of the mark that are considered to be devoid of distinctive character. Failure to submit the disclaimer may result in a partial or total refusal of the application.
In 2004, the company filed a new trademark application for the gas cylinder in a new combination of colours, the form of the recipient being essentially the same as in its old trademark registrations.
The examiner requested that a disclaimer be given for the shape of the gas cylinder, claiming that the shape would not be distinctive because, at the date of filing, it was of common use and already present in a technical standard. As the applicant did not agree with the disclaimer, the application as a whole was refused.
The first appeal
The case went to the Board of Appeal of the RPTO. The applicant vigorously defended its case, stating that:
• The rejection of an entire mark should occur only when the said mark exists exclusively in a sign that has become usual in the course of trade. The total rejection of the mark was an overreaction, as the mark consists of several elements, among which is the shape of the cylinder.
• The mere fact that the mark (comprising the respective form) was largely used by the applicant for more than eight years in the Romanian market before the date of deposit had contributed to the acquired distinctiveness.
• An engineering standard cannot be used for destroying the distinctive character of the mark, because its role is to set technical conditions for the fabrication and use of the gas cylinders.
The second appeal
The refusal of the application was maintained by the Board of Appeal of the RPTO and by the Court of First Instance. The Court of Appeal overturned the previous rulings and granted protection to the application. The main elements of its final decision are as follows:
• The lower courts made an error by reducing a complex mark, comprising an image with colours claimed as essential and word elements in special script, to one element—namely the form of the recipient—which is in fact inseparable from the other components of the mark. The motivations of the lower courts were based on this element artificially separated from the ensemble.
• The lower courts made a serious confusion between lack of distinctive character of a trademark and the character of a sign comprising the usual elements for which a disclaimer is made. Whereas the distinctive character of a trademark is appreciated seeing the mark as a whole, corresponding to the essential function of the trademark, the character of a sign made up exclusively from usual elements is compared against the general use of the sign for all products belonging to the same category.
• The lower courts did not analyse the applicability of those fundamental provisions of the law that constitute exceptions to the norm related to the exclusion from protection of the marks lacking distinctive character, or those composed exclusively from signs or indications that become usual "if before the date of application of the mark and due to the use thereof the mark has acquired distinctive character".
The Court of Appeal admitted the Final Appeal, cancelled the initial refusal and sent back the file to the RPTO for continuation of the registration procedures.
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Raluca Vasilescu is a trademark attorney and partner at Cabinet M. Oproiu in Bucharest, Romania. She can be contacted at: raluca at oproiu dot ro
source: World Intellectual Property Review September/October 2008, page 66 - www.worldipreview.com
