The recent decisions issued by the Trade Mark Re-Examination Committee of the Romanian State Office for Inventions and Trademarks (SOIT) in the three cases Limo v Voslauer Biolimo, subject to appeal pending with the 5th Civil Section of the Bucharest Tribunal, will have an important impact on the question of Limo trade mark distinctiveness for products in class 32, and may represent an important instrument to be taken into account by OHIM when deciding upon the pending oppositions filed by the owner of the Limo trade mark against Community and international trade mark applications containing this term.
George Ivanescu is since 2005 the registered owner of the national word mark Limo (number 070827) registered for all the goods in class 32, while Voslauer Mineralwasser AG is, since 2007, the holder of three international registrations for the combined marks Voslauer Biolimo designating Romania, among other countries, also in relation to certain goods in class 32.
On February 2 2008 Ivanescu filed with SOIT an opposition against the registration of the Voslauer Biolimo trade marks for goods in class 32 in Romania, invoking the rights deriving from his Limo national word mark.
| Trade marks in conflict |
| International registration 937570 |
International registration 937571 |
International registration 937572 |
National trade mark 070827 |
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LIMO |
In October 2008, SOIT's Examination Committee issued decision numbers 2704, 2705 and 2706 by which the Committee rejected the opposition and ruled for the continuation of the registration procedure for the individual, combined trade marks Voslauer Biolimo, considering that the trade marks in question are not similar.
Ivanescu continued to challenge the registration of the three Voslauer Biolimo trade marks by filing an appeal with SOIT's Re-Examination Committee, in July 2009, claiming not only that the trade marks are similar, due to the existence of the common term "Limo", but also that there is an obvious risk of confusion between them.
Strangely enough, Ivanescu further mentioned in his arguments that the distinctive character of his Limo word mark derives from the fact that the term "limo" is the short form for the English word limousine, and it would be interpreted as such also by Romanian consumers (although no such term is used in Romania for designating the Romanian word limuzina).
The Re-Examination Committee ruled, in agreement with the Voslauer Biolimo's arguments, that the earlier trade mark Limo has a weak distinctive character in relation to the goods in class 32, due to the fact that the term Limo is suggestive for the Romanian consumers who most likely will interpret it as a reference to the word "lemonade" – in Romanian limonada – defined by the main Romanian language dictionary as a "refreshing beverage made from lemon juice (or a lemon substitute), water and sugar; sparkling refreshing beverage made from fruit syrup". Furthermore, the Committee noted that due to the fact that the word mark Limo gained protection for the generic list of goods in class 32, this will also cover beverages such as lemonade, and that it is quite unlikely that the Romanian consumers will ever interpret the word Limo as deriving from the word "limousine".
Based on the fact that the protection of trade marks with a lower distinctive character is not as wide as for those with a high degree of distinctiveness, the Committee considered that the differences between the marks in question are sufficient to exclude any likelihood of confusion for the relevant public.
At this stage of the proceedings, Ivanescu is challenging the three decisions issued by the Re-Examination Committee in front of the Bucharest Tribunal, who will have to consider:
- if the only point of similarity between the marks – the term Limo – and the similarity between the goods in class 32 to which they relate are sufficient for determining a likelihood of confusion of the trade marks in conflict for Romanian consumers;
- if the Limo word mark has sufficient distinctive character when used in relation to certain goods in class 32 in order to be successfully opposed to the registration of other trade marks, such as Voslauer Biolimo, that include in their verbal part such verbal element for similar goods in this class.
The answers to be provided by the court to these questions through the decisions with respect to the conflict between Limo and Voslauer Biolimo will be relevant not only for these particular situations, but also for the other trademark applications filed at the European Community level, against which Ivanescu has already initiated opposition proceedings based on his word mark Limo, such as CTM application Limomix (008424921), CTM application Gaudi Limo (007369929), CTM application fritz – limo (007148984), and the international trade mark designating the EC Blimo (000927799).
Also, the decision of the Romanian court might be relevant for the owners of the trade mark applications Limolimo (IR designating the EC 000915333) and Sensalimo (CTM application 006504881) that have already been withdrawn from registration following the oppositions filed by Ivanescu, based on the same word mark Limo.
Last, but not least, the decisions issued by the Committees within SOIT confirming that the Limo national mark has a low distinctive character in relation to the goods in class 32 for which protection was obtained, together with the Bucharest Tribunal's rulings that will be given in the pending litigation (if maintaining the conclusions of SOIT's Committees) may have serious implications for trade mark owners seeking to register trade marks that include in their verbal parts terms that have a low distinctive character in relation to the goods for which they wish to obtain protection, but which were previously protected as trade marks.
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| Andreea Codrescu and Ana-Maria Baciu |
Nestor Nestor Diculescu Kingston Petersen
Bucharest Business Park, Entrance A, 4th Floor
1A, Bucuresti-Ploiesti National Road
1st District, 013681, Bucharest
Romania
Tel: +40 21 20 11 200
Fax: +40 21 20 11 210
office@nnkp.ro
www.nndkp.com