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News & Publications|Articles
National Trade Mark vs. Community Trade Mark. Article by Laurentiu Popescu, published in Bucharest Lawyer. NATIONAL TRADE MARK VS. COMMUNITY TRADE MARK
I. What is a Community Trade Mark?
The European Union mainly seeks economic purposes, especially the achievement of a joint market where the circuit of goods and services is carried out uniformly, without obstacles created by the legislative or the monetary differences. In order to achieve this goal, the member states have decided to also harmonize the legal rules that govern the legal regime of trade marks. To this effect, the following normative acts have been adopted:
(iii) European Council Directive no. 89/104/CE of December 21, 1988 (the "Directive") which harmonized the legislation of the member states regarding the legal regime of trade marks.
(iii) European Council Regulation no. 40/94/EC of December 20, 1993 (the "Community Trade Mark Regulation") whereby the Community Trade Mark was established.
Thus, in order to make the accession to the European Union possible, on the one hand, it was necessary that the legal regime of the trade marks registered in Romania, governed by Law no. 84/1998 regarding trade marks and indications of origin ("Law 84/1998") should be harmonized according to the Directive and, on the other hand, Romania had to acknowledge and to accept the extent of the community trade mark with respect to its territory.
The Community Trade Mark is a trade mark that produces identical effects in all member states of the European Union. Noteworthy is the unitary nature of the Community Trade Mark, the effect of which is the fact that the trade mark may be registered only for all countries that are part of the European Union, and the effects of the annulment or the revocation of the same are also produced for all of such countries. For example, it is inconceivable that a community trademark should be annulled or revoked for France only.
Establishing the institutional and the normative framework for the creation of the community trade mark was intended to eliminate the additional costs generated by the need to register a trade mark in each member state. This was aimed at fluidizing the circulation of goods and services within the Union and developing the companies that carry out their activity on the territory of several states within the Union.
Last, but not least, the creation of the community trade mark is intended to eliminate the situations where the same trade mark is owned by two or several persons, each enjoying exclusivity in one or several countries within the Union.
II. What are the consequences of extending the effects of the community trade mark in Romania?
Under the treaty of accession to the European Union, Romania agreed that, on the accession date, all of the registered community trade marks and all petitions for the registration of a community trade mark shall extend their effect with respect to the territory of Romania, in order to have an unitary effect on the entire territory of the Union.
Practically since the accession date, all of the registered community trade marks and petitions for the registration of community trade marks shall produce on the Romanian territory the same effects as the trade marks registered in Romania and the registration petitions lodged with SOPTM nationally or internationally, according to the Madrid Agreement or the Protocol to said Agreement ("National Trade Marks"). Thus:
(i) the owner of a community trade mark may oppose any unauthorized use of the respective trade mark in Romania.
(ii) community trade marks and petitions for the registration thereof may be opposed at the registration of a National Trade Mark which is identical or similar to the respective community trade mark.
Of course, if the State Office for Patents and Trade Marks ("SOPTM") does not dismiss the respective registration petition, the owners of the community trade marks may file (i) either an opposition to the registration of the respective National Trade Mark in accordance with Romanian law, (ii) or a legal action for the annulment of the trade mark's registration.
Consequently, community trade marks may be used on the Romanian territory even if they are identical with or similar to national trade marks previously registered in the name of other owners.
III. How can a National Trade Mark be protected within the judicial system of the community trade mark?
First of all, one must consider the fact that the judicial system of the community trade mark has been conceived to coexist with the National Trade Marks protected in the member states.
The rules that represents the basis for the coexistence between community trade marks and the National Trade Marks is that (i) on the one hand, a community trade mark may only be registered if an identical or a similar trade mark has been previously registered for identical or similar products in one of the member states and (ii) on the other hand, a National Trade Mark cannot be registered if there exists a similar community trade mark previously registered for the same products.
Notwithstanding such rule, which of course must also be applied in the case of the states acceding to the Union, it was decided to adopt the solution of unconditionally extending the effects of the community trade mark over the territory of the new member states, a transitory solution that applies to the community trade marks and the petitions for community trade marks lodged with the Office for the Harmonization of the Internal Market ("OHIM") prior to the accession date.
Subsequently to the accession, the aforementioned rule shall become fully operational, and the general rules of the Community Trade Mark Regulation shall apply.
1. Transitory rules applicable in the case of community trade marks and the petitions for community trade marks lodged prior to the accession.
Upon a first review, the owners of the National Trade Marks are disfavored as a result of the accession, as the community trade marks registered as of the accession date, and which are identical with or similar to a National Trade Mark, are considered validly registered in Romania. Practically, one may claim that the exclusive right conferred by the National Trade Marks is restricted pursuant to the accession.
Nevertheless, an analysis of the provisions of the Community Trade Mark Regulation proves that the European Union has found a compromise solution which allows for the extension without causing any prejudice to the owners of the community trade marks or of the National Trade Marks from the new member states.
The adopted solution was, on the one hand, to extend, over the new members states, the effects of the community trade marks and of the petitions for the registration of such trade marks, lodged with the SOPTM prior to the accession date, and, on the other hand, to create a judicial mechanism whereby the owner of a National Trade Mark registered prior to the accession may oppose such extension. This solution was long overdue, since it maintains intact the unitary nature of the community trade mark, in the absence of which the acknowledgement of such trade mark would lack interest.
Thus, in accordance with the provisions of art. 159a of the Community Trade Mark Regulation, the owners of the National Trade Marks have the following rights, on the basis of which they can prevent the use of the community trade marks in Romania:
(i) With respect to the petitions regarding a community trade mark that was lodged with the SOPTM less than 6 months prior to the accession date, the owners of the National Trade Marks having a registration date or an acknowledged priority prior to the one related to the respective petition, may file an opposition in accordance with the provisions of the Community Trade Mark Regulation. The opposition shall be solved by the OHIM. The decision passed by the Opposition Department may be appealed before the Appeal Committee within the same community institution. The decision passed by the Appeal Committee may be appealed before the European Court of Justice.
It must be taken into account that art. 42 paragraph 1 of the Community Trade Mark Regulation provides that the opposition may be filed within three (3) months following the date of publication of the community trade mark.
As to the aforementioned provisions, we consider that the term within which the aforementioned persons may file an opposition starts to pass either since the date of publication of the community trade mark, if such date is prior to the accession, or as of the date of publication of the trade mark, if the publication occurred subsequently.
This solution is necessary since only beginning from the date of Romania's accession to the European Union may one consider that the interested persons may file an opposition against the registration of the respective community trade mark.
As a consequence, said persons would be prejudiced if the publication of the community trade mark caused effects upon them prior to the accession date. Thus, the term of three (3) months within which the opposition may be filed sanctions the passive attitude of the opponent, who, although aware of the petition for the registration of the respective community trade mark as a result of publication, failed to file the opposition. Nevertheless, given that the date of Romania's accession is uncertain and the interested persons may file an opposition only after said date, it cannot be considered that the opponent is in default and, thus, the term of three (3) months cannot pass against them prior to the accession date.
We must emphasize that the opposition filed by the interested persons in accordance with the provisions of art. 159a paragraph 3 of the Community Trade Mark Regulation is the only method by which one may obtain the dismissal of the registration of a community trade mark that was lodged prior to Romania's accession to the European Union. Thus, according to said article, community trade marks that were registered or for which petitions for registration were lodged prior to the accession cannot be annulled on the grounds of a prior national trade mark.
In this context, the interested persons who failed to file an opposition within the aforementioned term, may oppose the use of the respective community trade mark in Romania, availing oneself of the provisions of the Community Trade Mark Regulation applicable in the case of trade marks that were registered or lodged with OHIM over six (6) months prior to the date of accession, which provisions we shall set forth below.
(ii) According to the provisions of art. 159a paragraph 5 of the Community Trade Mark Regulation, the owner of a National Trade Mark registered prior to the accession may request before court to prohibit the use of a community trade mark in Romania if such trade mark is identical to or similar with the National Trade Mark in discussion and is used for identical or similar products or services.
Thus, in accordance with the Community Trade Mark Regulation, the use of a community trade mark may be considered a breach of the National Trade Marks registered prior to the accession. Consequently, the owners of such trade marks may resort to the method of legal action for counterfeit, in accordance with Law 84/1998, in order to prohibit the use of any community trade mark that extended its effects as a result of the accession.
Said actions for counterfeit pertain to the competence of the tribunal in the jurisdiction of which the defendant's headquarters are located, and the resolutions passed by such court may be challenged by appeal and by second-degree appeal.
2. The rules on the basis of which a National Trade Mark may be opposed at the registration of a community trade mark.
As we set forth above, subsequently to the accession, no new community trade mark may be registered if an identical or a similar National Trade Mark was previously registered for the same products.
Unlike Law 84/1998, the implementing of this rule is not carried out by OHIM, which, in the procedure of the petitions for the registration of the community trade marks, solely examines the absolute grounds for refusal that protect a collective interest (such as the lack of distinctiveness), and not the relative grounds for refusal, which protect personal interests.
Thus, the protection of the national trade marks is incumbent upon their owners, who/which are provided under the Community Trade Mark Regulation with the following possible actions.
(i) Opposition to the petition for registration of the community trade mark
In accordance with the provisions of art. 42 paragraph 1 of the Community Trade Mark Regulation, the owners of the National Trade Marks can file an opposition against any community trade mark within three months following the date of publication thereof. The opposition shall be solved by OHIM, the decision of which is subject to the same methods of appeal set forth under point II above.
The advantage of filing the opposition is represented by the fact that the procedure for the registration of the community trade mark against which the opposition is filed is suspended until the solving of the latter and of the methods of appeal. As a consequence, until the solving of the opposition, the community trade mark cannot be opposed to the owner of the National Trade Mark, who may use the same in any state of the Union, even if the trade mark is not protected in the respective state.
(ii) The action for the annulment of the community trade mark
In the event that the owner of the National Trade Mark failed to file an opposition to the petition for the registration of the community trade mark, then such owner may resort to the method of legal action for annulment, according to art. 53 of the Community Trade Mark Regulation.
The legal action for annulment pertains to the competence of OHIM and it may be filed at any time within the period of validity of the community trade mark. The decision passed by the Department for Annulments may be challenged with appeal before the Appeal Committee, also within OHIM, and the decision passed by the Appeal Committee may be challenged before the European Court of Justice.
In the event that the owner of the community trade mark proves that he/she it has used his/her/its trade mark in Romania for a period of five (5) consecutive years, then the action for annulment shall be dismissed.
(iii) The legal action for counterfeit, filed according to Law 84/1998
Similarly to the case of the community trade marks that extend their effects as a result of the accession, the owner of a National Trade Mark may oppose the use of a community trade mark registered prior to the accession, by filing a legal action for counterfeit. Said legal action shall be admitted if the community trade mark is identical with or similar to the National Trade Mark, and if it is used for identical or similar products. This legal action pertains to the competence of the tribunal in the jurisdiction of which the defendant's headquarters are located.
Last, but not least, we must consider the fact that a legal action for the annulment of a community trade mark or the opposition filed with respect to the registration of the same may be dismissed upon the defendant's request, if the owner of the National Trade Mark cannot prove that he/she/it used his/her/its trade mark over the period of five years prior to the registration of the action for annulment or the publication of the community trade mark, respectively.
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