Andreea Bende introduces the new trade mark invalidity and revocation procedures in Romania.

The Romanian Government Ordinance No. 169/2022 adopted in December 2022 introduced several changes to the Romanian Trademarks Law no. 84/1998, including pertaining to the alternative procedure for invalidity and revocation of registered trade marks.

In the previous legislative framework, these procedures could be pursued only before the Romanian Bucharest Court of Law, which had special competence in these matters.

These changes, which finally transpose the provisions of the EU Trade Marks Directive, allow interested parties, starting from January 2023, the alternative of pursuing the invalidity or revocation of national trade marks before the Romanian State Office for Inventions and Trade Marks (the Romanian IPO).  

Key features of the new procedures

Claims brought before the Romanian IPO will be analysed by a committee of experts especially appointed for this task. It will be composed of three members with a legal background of minimum three years and competent in trade mark matters.

According to the law, the Committee’s members should not be also tasked with other trade mark operations within the IPO and their activity should not interfere or overlap with that of the IPO’s Appeals Committee.

According to the law, invalidity and revocation claims must be filed before the IPO in writing, in the Romanian language, either by post, facsimile or using electronic means (i.e. e-mail) and must indicate: a) the applicant and its appointed representative, if applicable, b) the particulars of the contested trade mark(s) and the targeted goods and/or services (if a partial invalidity/revocation is sought), c) the prior rights relied upon, d) the factual and legal arguments, e) the evidence intended to be relied upon and f) the power of attorney (if the claim is filed through a representative). 

The IPO will assume that the claim is directed against all the goods and services under the mark if they are not specifically indicated in the claim.

Claims can be submitted only in Romanian and any evidence annexed needs to be accompanied by a Romanian translation (evidence filed in a foreign language without translations will not be considered by the Committee when reviewing the claim).

Claims must be filed in as many copies as the number of parties involved in the procedure, and all copies annexed thereto need to be certified for conformity.

Claims are preliminary reviewed in a term of five days from filing and applicants will be notified by the Committee in respect of any deficiencies, which would be required to be corrected also in a term offive days. 

Admissible claims are further notified to the respondent(s) (the trade mark owner(s)). They will be granted a 30-day term to file their written point of view. The applicant(s) also have the possibility to file additional observations to the respondents’ arguments, in a term of 10 days from their communication.

Oral stage

The procedures include an oral stage and the parties will be invited to sustain their arguments on the merits during a public hearing scheduled before the Committee. At the hearing, the Committee members have the possibility to address questions to the parties if granted by the presiding member of the Committee.

After hearing the parties’ oral arguments on the merits, the Committee must rule on the case. In special cases, depending on the complexity of the case, the ruling can be postponed for two consecutive terms, each a maximum of seven days. 

Grounds

According to the Romanian Trade Marks Law, trade mark invalidity claims can be pursued on either absolute or relative grounds, similar to those provided for under the EU Trade Mark Regulation.

Revocation claims can be pursued when the contested mark was not genuinely used on the market in the past five years, in respect of the goods/services protected, with no reasonable reasons for non use; if the mark became generic as a consequence of the holder’s action or inaction; or if it became misleading.

A cautious approach

The option to pursue invalidity and revocation claims before the Romanian IPO is generally welcomed by the users of the trade mark system in Romanian, as they expect a more rapid and cost-effective procedure. But so far there is very little practical information about actual cases dealt with by the Romanian IPO.

Therefore, invalidity/revocation applicants continue to exercise caution and to prefer to address their claims to the Bucharest Court.

Andreea Bende is a Partner of Simion & Baciu in Bucharest and a member of the MARQUES European Trade Mark Law and Practice Team.

EUIPO’s next webinar will be a review of Boards of Appeal decisions and CJEU and EU General Court judgments from the first quarter of this year.

It will take place on Tuesday 28 March from 10:00 to 12:00 CEST and you can find out more and register here.

The webinar will be presented by Boards of Appeal members Normunds Lamsters, Stefan Martin and Riccardo Raponi. They will cover the following General Court judgments and Boards of Appeal decisions:

• T-772/21 of 01/02/2023 - efbet (fig.)
• T-372/21 of 8/03/2023 - Sympathy inside
• T-133/22of 15/02/2023 (THE FUTURE IS PLANT-BASED)
• T-341/22 of 15/02/2023 - Avanza Tu negocio (fig.) / Avanza Credit de Deutsche Bank
• T-568/21, T-569/21 of 01/03/2023 - GC GOOGLE CAR  / Google et al.
• 28/02/2023, 2357/2022-2, METAVERSE FOOD
• 23/01/2023, R 2420/2020-1, BERTRAND PUMA La griffe boulangère (fig.) / PUMA (fig.) et al.
• 17/02/2023, R 531/2022-2, NERO CHAMPAGNE / Champagne (GI)
• 01/02/2023, R 1511/2020-1, Xerox
• 01/03/2023, R 603/2022-5, HAVANA SOCIAL (fig.) / H HAVANNA (fig.))

The webinar is part of EUIPO’s series of regular Tuesday webinars. These can be found on the EUIPO Academy e-Learning Portal, which also offers a wide-ranging catalogue of educational modules and full training courses to cover all professional training needs.

The MARQUES Brands & Marketing Team has published two new documents: a Basic Introduction to Web3 presentation and a paper on social media impersonation.

Both documents are available to download from the Team’s page on the MARQUES website (PDF, log-in required).

The presentation provides a short and accessible explanation of Web3, with practical examples. It includes a history of the development of the internet up to Web3 and a discussion of Web3 applications. It also explains some of the key characteristics of Web3, including decentralisation, blockchain and potential risks.

The presentation includes several use examples and also discusses wallet addresses and NFTs.

The paper on social media impersonation addresses the growing problem of imposer social media accounts on platforms such as LinkedIn, Facebook and Instagram. These accounts can be set up in minutes and can impersonate individuals, profiles or groups.

Such bogus accounts can be used to perpetrate online scams via email and/or private messaging tools such as WhatsApp and Telegram. The paper provides several recommendations for brand owners from an enforcement perspective.

The documents are written by Daniel Greenberg and Robert White of Lexsynergy. Daniel is a member of the Brands & Marketing Team, and can be contacted if further information is required.

WIPO is hosting a webinar titled “Overview of eMadrid: The Madrid System Online Services” this Wednesday 22 March at 1600 (Geneva time).

The webinar will provide an interactive guided tour of all the online services available under eMadrid. It will be of interest to anyone who manages international trade mark registrations.

It will also include a look at the newest online service, Request a Cancellation.

The webinar is open to users of all levels and will include a Q&A session. It will be held in English.

You can register here to watch the webinar live or access the recording afterwards.

Find out more about eMadrid on WIPO’s website here.

On 7 March 2023, UCL-IBIL and MARQUES hosted the latest “Question the Trade Mark Judges” event. The Q&A panel discussion covered various timely issues in EU and UK trade mark law and procedure. Around 70 trade mark practitioners and UCL students (with a further 25 online) were given practical insights into the workings of the various tribunals represented by the panellists:

• Al Skilton, Senior Hearing Officer of the UK Intellectual Property Office;
• The Hon Mr Justice Meade, England and Wales High Court;
• Sven Sturmann, Chair of the Second Board of Appeal of the EU Intellectual Property Office; and
• Professor Dr Vesna Tomljenovic, Judge of the General Court of the EU.

The evening was hosted by Roland Mallinson, Partner of Taylor Wessing LLP and member of the MARQUES Executive Team, and Professor Sir Robin Jacob, the Chair of IP Law at UCL.

Thanks to Elena Glengarry and Fabio Lo Iacono of Taylor Wessing for providing the following summary of the discussion.

Specifications

The panel discussed the length and breadth of specifications of trade mark applications, in relation to a question directed at possible reforms to UK trade mark law with the potential 'sunsetting' of various provisions as a result of the Retained EU Law Bill.

While acknowledging that no significant overhauls should be made at the moment in the interests of keeping procedure intact, the judges noted that very long specifications make comparisons of goods and services more time consuming and complex for judges, so perhaps there could be new rules surrounding this.

They suggested that the EU could consider narrowing the non-use period, perhaps to three years, and consider bringing in ex-officio examination similar to the USA to try and combat overly broad protection.

Written submissions

The panel was asked whether written submissions are too long in trade mark cases they hear. They agreed that written submissions carry the most value when they are clearly structured and directed at the key issues, and are not repetitive. This was also supported in relation to skeleton arguments – they want representatives to wrap up the case briefly and concisely.

The importance of representatives using native speakers of languages to prepare written submissions was also highlighted – it is obvious to the EUIPO when representatives use automatic online translation services (such as Google Translate).

Rather than lengthy repetitions of earlier points, the panel welcomed the in-depth submissions that focus on the complex aspects of a case. To illustrate, one area that tends to consistently lack this is submissions on the comparisons of goods and services between a contested mark and the earlier right.

The judges emphasised the importance of backing up submissions with evidence to support a finding of similarity, for example where there has been evidence of a shift in attitude among consumers.

Online hearings

The judges were also asked if there is any need to go back to in-person hearings, considering that virtual hearings can save time and money. Online hearings can be more exhausting because the discussion can be difficult to moderate, and they require intense focus as the parties appear across multiple screens. Non-verbal communication and the subtleties in court are also missed; however the judges noted that online hearings did not seem to cause problems when assessing witnesses online.

Online hearings may also obstruct settlement between the parties because it is not possible to conduct negotiations "in the corridor". So overall, online can be satisfactory but not for important cases.

At the EU level, online hearings can be very practical as attending hearings in person in Luxemburg is expensive. However, it seems that most of the time oral hearings should not be requested in the first place, as usually the parties repeat what has been argued in the written submissions.

There is also the issue of adhering to the open justice principle and avoiding misuse of the video – a live feed of the online hearing may be appropriate in some cases, but English courts do not generally allow the public to record the hearings. A possible solution is asking the interested public to register to attend the hearing, so they can join with specific links, and access can be monitored.

The judges also noted that clear written submissions are also helpful if there is an audience at a hearing.

Reputed marks, judicial notice, proof of use

Building on the discussion of written submissions and defences to actions, the panel provided their views on proof of use and reputed trade marks. Particularly where a reputed mark is concerned, the panel agreed that evidence of proof of use is not always gathered well.

Owners should gather and submit as much evidence as possible, to avoid falling short and potentially failing to prove use, even where the mark is very famous in reality – such as the BIG MAC trade mark registration which was initially revoked for this reason (a decision that was reversed on appeal after further evidence was submitted).

Sir Robin asked whether judges should be permitted to take judicial notice of the fame of a trade mark, or whether you should always need to submit evidence. The UKIPO has taken notice of a mark’s fame before, but only in the clearest of circumstances.

The judges discussed having a register of marks with accepted well-known/reputed status, as happens in countries such as China, which could cut down on evidence costs, However, it would be difficult to determine where to draw the line in respect of the goods and services that mark is accepted to be famous for.

Such a system would not be procedurally useful if the status was contested by another party, and the judge would have to do the full analysis of evidence of reputation anyway. It is a difficult line to draw, but where possible parties should continue to refer to earlier decisions where they have successfully proved reputation.

Geographical names and weak marks

The panel discussed the recent Iceland case, where the EUIPO dismissed Iceland Foods' appeal against the cancellation of its EU trade mark registrations for ICELAND. The panel considered that such geographic marks can be allowed in certain circumstances, however they should generally be treated with caution. It was queried whether EU bodies should be much stricter in allowing their registration.

Building on this discussion, Sir Robin posed the question of whether we are too soft on allowing the registration of weakly distinctive trade marks in the EU and UK. The panel generally agreed with this, and also noted that now the General Court is trying to shape EU case law on this and prevent disparities in decisions by having specialised judges harmonise their approach.

The judges highlighted the complicating factor of there being 24 official languages in the EU, as well as other languages that are widely understood. Sometimes this makes it very difficult to avoid finding a likelihood of confusion. 

Artificial intelligence

The panel was asked to consider if artificial intelligence (AI) or virtual judges in trade mark cases could be a good thing to implement. The use of AI can be useful to triage trade mark cases when offices are experiencing high volumes; however this use should be restricted to simple tasks.

AI can also be useful for comparing long lists of goods and services and possibly for deciding on identity cases or simple similarity cases. This is because the AI may be better placed to have a consistent approach in assessing the likelihood of confusion with reference to relevant case law.

The judges noted that, in some cases, it is difficult to predict what the answer of the AI would be. For example, AI does not seem able to differentiate between figurative marks. As AI works with percentages, assessments based on balance of probabilities are more difficult and the AI may not make the best assessment in line with the relevant tests.

There are also problems of access to justice and audit to consider, so it may be premature to give a definitive answer on the use of AI in relation to more advanced cases. In general, a better understanding is needed of what AI really is.

Earlier rights

Another question raised was whether it could save time and money, without denying justice, to require opponents and claimants to rely on no more than two or three prior rights. The panel recognised that, most of the time, one or two earlier rights are enough.

The UKIPO already limits the number to six in normal oppositions and three in fast-track oppositions. The EUIPO does not have a similar system and introducing new rules to limit the number of earlier rights would need to be done carefully.

There might be some benefits in including all the earlier rights, even if it does make the assessment more detailed for the Office. This is because the opponent has more options if alternative grounds fail.

MARQUES hosts Meet the Judges events in various countries and is currently planning further meetings. For more details, view the Events page. The photos in this post were taken by MARQUES

Jürg Simon, Chair of the MARQUES GI Team, reports on a recent decision in favour of the appellation Champagne in Switzerland.

The Swiss Federal Supreme Court decided on the dispute about "Commune de Champagne PDO" in two judgments dated 23 December 2022 and 22 March 2022.

The Canton de Vaud had introduced, in January 2021, a protected designation of origin (PDO) "Commune de Champagne" for still white wines of the Chasselas grape grown in the municipality of Champagne.

The Comité interprofessionnel du vin de Champagne CIVC challenged this legal act before the Constitutional Court of the Canton Vaud.

Court judgment

The Court agreed with the CIVC (judgment of 1 April 1 2021) that this new PDO contradicted the exclusive protection for the appellation "Champagne" for wines originating from France granted explicitly by Switzerland’s bilateral agreement of 1999 with the European Union on trade in agricultural products.

The Court ruled in essence that it cannot be assumed that the reference to the TRIPS Agreement of the WTO in the bilateral agreement would allow the homonymy exception of the TRIPS Agreement to be invoked successfully in all cases, since the text of Article 23 paragraph 3 of the TRIPS agreement leaves WTO Members a certain margin of appreciation as to the modalities for granting this homonymy exception.

Furthermore, the Swiss authorities had already accepted the validity of the exclusive protection of the appellation "Champagne", notwithstanding the homonymy with the municipality.

In a decision of 2 June 2016, the Federal Department of Finance had decided that the TRIPS Agreement did not render the 1999 bilateral agreement unlawful with respect to the absolute protection of the French appellation "Champagne".

Constitutional Court

The Constitutional Court reached the same conclusion. The bilateral agreement provides for a strict regime for the appellation "Champagne", which excludes the homonymy exception for wines originating from the municipality of Champagne.

A Swiss regulation – in this case cantonal, given that appellations of origin of wines are cantonal, not federal law in Switzerland – that has the effect of overriding the exclusive protection of the appellation "Champagne" resulting from the bilateral agreement violates international law.

The appeals to the Swiss Supreme Court of the Canton de Vaud (22 March 2022), the Commune de Champagne and the Communauté de la vigne et du vin de la Commune de Champagne (23 December 2022) were rejected or not dealt with for fundamental procedural reasons. Links are here and here.

This decision concludes the dispute about the Champagne PDO in Switzerland.

Jürg Simon is Chair of the MARQUES GI Team and a Partner of Lenz & Staehelin in Zurich. He represented the CIVC in this case.

Picture of Champagne taken from Wikipedia.

Peter Wild, a long-time MARQUES Council and Team member, gave the Kay Uwe Jonas Memorial Lecture at the MARQUES Spring Meeting in Frankfurt last week and was also presented with the David Goldring Volunteer Award.

During some 20 years of service to MARQUES, Peter was Chair of the Programming Team and Vice-Chair of the Dispute Resolution Team. Among his achievements were the launch of the Luxury Brands Symposium, which has now been held three times.

Since retiring from IP practice last year, Peter has focused on charity work and fundraising, and is now a member of the Council of Human Rights Watch in London. In the Kay Uwe Jonas lecture, he spoke about “dignity, fairness and freedom” in the law.

In the lecture, Peter identified four main ways that IP and human rights interact: (1) IP rights as rights to property, for example in Article 17(2) of the EU Charter of Fundamental Rights; (2) potential tensions between protection of IP rights and free speech defences, such as in recent NFT cases; (3) human rights issues in supply chains of branded products; and (4) in the reliance on independent justice and due process.

“These aspects come under pressure and we need to stand up against the violations,” said Peter. But he added that standing up in this way “can be painful” and said: “We should put human rights on the list of our concerns and actions, and not abuse them for short-term gain.”

After the speech, Peter was presented with the David Goldring Award by Willem Leppink of the MARQUES Executive Team and Ingrid de Groot, MARQUES Internal Relations Officer (pictured left).

More than 150 MARQUES Council and Team members attended the Spring Meeting to discuss current and planned MARQUES activities and events. During the Meeting, Antony Douglass of Specsavers became MARQUES Chair, while Claudia Pappas of Thyssenkrupp became 1^st Vice-Chair and Leo Longauer of LVMH became 2^nd Vice-Chair (pictured right).

Look out for an interview with Antony about his plans and priorities as Chair, which will be available soon!