Absolute grounds of trademark refusal: legal framework
Romanian Trademark Law1 (“RTL”) provides two categories of grounds of refusal that can be claimed in refusing a trademark application or invalidating a registered trademark: relative grounds (referring to conflicts between trademark and prior rights of third parties) and absolute grounds of refusal.
Absolute grounds of refusal (provided under art. 5 (1) (a)-(n) RTL) inter alia prohibit the registration of trademarks that (i) are devoid of distinctive character; (ii) may serve in trade to designate kind, quality, purpose, value, geographical origin or other characteristics of goods/services; (iii) have been commonly used in the current language or established practices of trade; (iv) are deceptive in respect of geographical origin, quality or nature of goods and services; (v) contain a geographical indication that misleads the public as to the real origin of the goods; (vi) are contrary to public order or morality; (vii) contain signs protected under art. 6 ter of the Paris Convention for the Protection of Intellectual Property (the “Paris Convention”) without the consent of competent authorities that hold such signs; and (viii) contain signs, other than those protected under art. 6 ter of the Paris Convention, without the permission of authorities holding such signs.
Statute of limitations on trademark invalidation proceedings
Both absolute and relative grounds of refusal could be invoked under examination proceedings to refuse a trademark application, and to invalidate a trademark after it is registered.
Invalidation proceedings (based on absolute and relative grounds) should be brought before the Bucharest Court (Tribunalul București) within the statute of limitations period (“SLP”) of five years from the date of trademark registration (art. 47 (1) (a) (b) (3) RTL).
Legal issues of the statute of limitations for invalidation proceedings due to absolute grounds of refusal
The SLP blocks trademark invalidation proceedings, rendering a challenged trademark unchallenged. Blocking invalidation proceedings that are based on relative grounds of refusal is justified – the SLP would only be a consequence of the inactivity of the right-holder who did not exercise his right to contest a later conflicting trademark owned by a third party. But blocking invalidation proceedings that are based on absolute grounds of refusal due to the expiry of the SLP is in conflict with other laws.
Let us assume that trademarks subject to absolute grounds of refusal stay unchallenged due to the expiry of the SLP. What would the consequences be? Such trademarks lacking distinctive character, or designating characteristics of goods/services, or customary in the trade/current language, should be freely available for use by anyone. Making such registrations incontestable after five years would create a monopoly by which the trade-mark owner may require third parties to refrain from the use of respective signs. This situation would definitely be in conflict with the reason behind absolute grounds of refusal.
Registration of a trademark consisting of a geographical indication (“GI”) for goods not originating from the designated territory is contrary to the EU Regulations on protection of respective geographical indications (the “GIs Regulations”) (EU Regulations 1151⁄2012, 110⁄2008, 1308⁄2013, 479⁄2008), bearing in mind that under the GIs Regulations, member states are compelled to reject such trademarks.
The Constitution of Romania (“ROC”) obliges the Romanian state to comply with interna-tional treaties and conventions (art. 11 (1) ROC) and forbids manifestations contrary to morality (art. 30 (7) ROC). In addition, art. 6 quinquies B (iii) of the Paris Convention, to which Romania is party, requires contracting parties to refuse trademarks that are contrary to morality and public order. Taking these aspects into account, registration of trademarks that are against morality and/or public order, disregards constitutional rules under art. 11 (1) ROC. Moreover, registration of a trademark contrary to morality may be deemed a manifestation forbidden by art. 30 (7) ROC.
Registration of a trademark consisting of a sign protected under art. 6 ter of the Paris Convention, without the consent of a competent authority, is contrary to the Paris Convention, leading to non-compliance between RTL and constitutional rules under art. 11 (1) ROC.
The statute of limitations for the invalidation of a trademark registered by disregarding absolute grounds of refusal is in conflict with constitutional, EU and international law.
The solution is to make absolute grounds of trademark refusal really absolute without a statute of limitations period.
Absolute grounds for trademark refusal should remain really absolute regardless of the time factor.
1Law 84⁄1998 on trademarks and geographical indications republished