Under the Moldovan Trademarks Act no.38/2008 (Trademarks Act), a mark is recognised as well-known on the basis of a request filed with the Chisinau Court of Appeal or on basis of a counter-claim filed during examination of a statement of claims on protection of rights.
The request on declaration of a mark as well-known must contain:
- the request on declaration of the mark as well known and the date from which the mark is to be considered as well known;
the name, address and signature of the managing director of the applicant;
- the name and address of the trademark attorney (representative), if the request is filed by a representative;
- the description of the mark requested to be declared as well-known; and
- the goods and/or services for which the mark is used and pursuant to the provisions of the International Classification of Goods and Services.
Basis for the declaration of a mark as well-known
To declare a mark as well-known, the applicant must submit to the court any information that would prove the notoriety of the mark, including:
- the level of awareness of the mark on a relevant market and by a relevant scope of persons;
- the duration (commencement and period), level and geographical area of use of the mark;
- the duration, level and geographical area of promotional activity of the mark;
- the duration and geographical area of registration and/or any registration application where such registration and/or application reflects the use and/or notoriety of the mark;
- a report confirming the value of the mark;
- the results of the polling performed by the applicant with regard to the mark; and
- additional information that would be helpful for declaring the mark as well-known (Article 32⁄4 a) Trademarks Act).
In practice, polling is the most common tool used and the most decisive proof when it comes to declaring a mark as well-known. It is therefore very important that the polling is well-prepared. In particular, the applicant must precisely define the geographical area of use of the goods and/or services under the mark, as well as the persons for which such goods and/or services are intended to be provided (eg, age, gender, level of education, occupation, etc.). Note that for certain types of products, the Trademarks Act requires a minimum level of awareness (eg, minimum 60% of awareness is required for a mark used for goods of technical (industrial) use; Article 32/6(4) Trademarks Act).
Participants in the polling must answer at least the following questions:
- whether they know the respective mark;
- whether they know the holder of the mark or the producer of the good (product) under the mark;
- the date from which the mark has been known to them;
- familiarity with the mark (well-known, known, less known, unknown); and
- estimation of the good (product) (excellent, very good, good, average, unsatisfactory; Article 32/6(6) Trademarks Act).
The judgment on declaration of the mark as well-known
Depending on the information provided by the applicant, including the results of the polling, the Chisinau Court of Appeal issues a judgment granting the applicant’s request and declaring the mark as well-known, or rejecting the applicant’s request.
The applicant’s request on declaring the mark as well-known will be rejected if:
- the information submitted by the applicant does not correspond to the requirements under the Trademarks Act;
- the applicant’s mark is identical or similar to a mark registered or for which an application for registration has been filed by another person for the same products and/or services, the priority date of such other mark being earlier than the applicant’s;
- the mark became a common name; or
- the mark contradicts the public order or the rules of morality (Article 32/6(7) Trademarks Act).
The judgment on declaring of a mark as well known is notified to the State Agency on the Intellectual Property of the Republic of Moldova, the mark being registered with the Register of well-known marks within three months as of the date of issuance of the judgment. Should any party to the process not agree with the judgment of the Chisinau Court of Appeal, such party has a right of recourse. This must be filed within two months with the Supreme Court of Justice of the Republic of Moldova (Article 434 Code of Civil Procedure of the Republic of Moldova).
The declaration of a mark as well-known in Moldova is not a mission impossible. However, applicants must consider that most of the work is to be done before the request is filed with the court.