The applicant was a Romanian citizen, whose surname is BECALI. He happens to be quite well known to the Romanian public for being involved in financing sport, as well as for his wider commercial activities.
He filed a word mark application for BECALI with the Romanian Patent and Trademark Office (RPTO) in 2004 covering all classes. After publication, an opposition was lodged by a company whose commercial name included the word BECALI, because one of the owners of this company has the same surname. One of the main lines of reasoning of the opponent was the potential confusion over the origin of goods, given that both persons sharing the surname BECALI are known in Romania for various activities. The opposition was grounded on harm to the patronymic image of a person and on lack of distinctive character.
The opposition was admitted and so an appeal was lodged with the RPTO, thus denying registration of the mark. In so deciding, the Board of Appeal held, among other things, that "it is permitted the registration as trademarks of surnames, but accompanied by figurative elements or stylised characters which would confer distinctive character".
The Bucharest Court of First Instance has upheld the decision of the Board of Appeal, stating its reasoning as: "...due to the fact that there are several physical persons bearing the surname BECALI known to the Romanian public, including commercial undertakings comprising said surname, the registration as a trademark would create the risk that the goods/services bearing the mark would be associated with any or all of the physical persons having the same surname."
The decision of the Court of First Instance was totally reversed by the decision of the Court of Appeal in a final and irrevocable decision given in December 2007. The motivation for this ruling shed light on some hot areas of trademark practice in Romania.
Firstly, trademarks and commercial names, although objects of industrial property, have different functions and juridical natures, as well as being governed by different laws.
Commercial names serve to differentiate between commercial undertakings, whereas trademarks aim to differentiate between the goods and services of those undertakings.
A commercial undertaking (such as that of the opponent in this case) does not have the active standing of an interested person to oppose a trademark application consisting of a surname on the grounds of harm to the patronymic image. Only the physical person bearing the surname can have active standing to oppose against such a mark.
A commercial name does not reserve to its owner the right to ile at will a trademark comprising of one or more elements of that commercial name.
Secondly, there are no speciic provisions in Romanian trademark law according to which a mark shall not be registered due to conflict with a pre-existing commercial name. The mere identity (partial or total) of the commercial name with a trademark cannot be a reason to deny abs initial protection to a trademark, in the absence of evidence that the owner of the commercial name would be materially prejudiced by the registration of the trademark.
In cases where the commercial name consists of several words, the applicable law confers protection to the name as such (as a whole); however, said protection does not extend to each individual element making up that commercial name.
Finally, as far as the distinctive character is concerned, the Court of Appeal is of the view that the distinctive character as a prerequisite for obtaining trademark registration must not be mistaken with the originality of the mark. Creativity or novelty is not required when applying for trademark protection.
The mere existence of several persons having the surname BECALI is not an obstacle to obtaining a trademark registration as long as it is not explicitly set out in the legislation as a reason to deny registration of a trademark. The aim of a mark is to differentiate the goods and services of one undertaking from the goods and services of another undertaking, and not to identify the person that produces said goods and services.
The Court of Appeal admitted the Final Appeal and reversed all the previous decisions, and consequently dismissed the opposition as not grounded. The file was sent back to the RPTO for continuation of the registration procedures, namely the grant of the trademark.
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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 November/December 2008, page 79 - www.worldipreview.com
