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Romania: Decision on trade marks and morality




A recent decision of the Appeal Committee of the Romanian Trade Mark Office accepted the registration of the standalone word mark De Obicei (the Romanian for "ususally") for tobacco products in class 34.

According to the decision (made in July 2013, communicated in July 2014) in relation to the appeal case number CCM 187/2013, the examiners overturned the initial ruling issued by the examiners within the Trade Mark Examination Division.The trademark application for De Obicei (number M 2012 05003) filed for protection on the Romanian territory in 2012 on behalf of Philip Morris Products was initially rejected by the examiners, following examination on absolute grounds. The application was refused on the basis of the legal provisions of Article 5 (c) (i) of the Romanian Law on Trade Marks, which state that a sign cannot be protected as a trade mark in Romania if:

  • it consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade; […]
  • it is contrary to the public policy or to the accepted principles of morality.

According to the refusal notice issued and communicated by the Trade Mark Office, the word application De Obicei was refused as it was considered a sign ordinarily used in any field of activity – since its meaning defined by the Romanian Explicative Dictionary is that of "usually, ordinarily, an individual habit gained through the frequent repetition of the same action". Further, the examiner also indicates that a potential registration of this word sign as a trade mark in relation to goods in class 34 (tobacco products) could cause consumers to smoke, which would be contrary to public order.

Although the Office did not accept the applicant's arguments initially filed in response to the refusal notice (and a refusal decision was further issued by the Trade Mark Department reiterating the grounds for refusal), this ruling was overturned after the applicant appealed the decision.

According to the decision of the Appeal Committee, the requested trade mark is not in fact commonly used in the established languages and practices of the trade with tobacco products and the average consumer will not automatically link the requested sign with the goods sold under the mark.

As for the second absolute ground for refusal invoked against the trade mark application, the Appeal Committee noted that, according to the Romanian law, tobacco products may be legally manufactured, sold and promoted on the Romanian market and the sign applied for cannot be interpreted as an instigation towards acts that would be contrary to the principles of public order (or the principles of morality) in view of the overall meaning of the sign applied for.

The case is important mainly because it shows how the Trade Mark Office applies the legal provisions regulating the absolute grounds for refusal, from examination to appeal.

Andreea Bende

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@nndkp.ro
www.nndkp.ro


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