Nutricia International B.V. (Nutricia), part
of the Danone Group, has obtained a
second positive final decision in an
annulment action brought against a local
producer of milk and milk products, S.C.
Avi Seb Impex SRL (Avi).
Avi registered a "milapo with device"
trade mark
with the Romanian Trademark Office for
all the products in Class 29, including
milk and milk products, which was
annulled by the Bucharest Court of
Appeal following a final decision based on
procedural issues.
Avi also registered another "milapo with
device" trade mark as shown with the
Romanian Trademark Office for all the
products in Class 29, including milk and
milk products.
Nutricia is the owner of a Community
word mark, being registered, inter alia, for
"dietetic substances adapted for medical
use; food for babies" in class 5 and "milk
and milk products" in Class 29; a
Community word and device mark as
shown being registered, inter alia, for
dietetic substances adapted for medical
use; food for babies in class 5 and all
products in Class 29 and finally a class 5
Community word and device mark for,
inter alia, dietetic substances adapted for
medical use; food for babies.
Nutricia considered that its prior trade
mark rights were infringed by Avi's
registration, especially taking into account
the inherent and acquired distinctiveness
by use in Romania of the Milupa trade
marks and therefore decided to file an
annulment action against the registration
by Avi of the "milapo with device" trade
mark.
Arguments:
Nutricia's arguments in court were
extensive, including but not limited to:
- the similarity of the trade marks
compared,
- "milapo" being the principal element
of the trade mark,
- the existence of a disclaimer for
`cascaval Pintea',
- the high distinctiveness of the CTMs
which was not only inherent, but also
acquired by extensive use of the
CTMs in Romania evidenced by
volume sales, surveys and amount of
advertising and marketing undertaken
in Romania in connection with the
brand,
- the beginning of the trademark being
of a high importance,
- the identity for some of the products
and the similarity for the remaining of
the products for which the trade
marks in question were registered,
- risk of confusion and association.
Findings of the court:
In its judgment, the Bucharest Court of
Appeal decided to annul the `milapo with
device' trademark because of
(1)the similarity of the two trademarks
based on
(i) the principle applicable in
appreciating the verbal similarity
which is that the beginning of the
trade mark is of a high importance
and taking into account that the
compared trade marks have the same
prefix `mil', the trademarks are similar,
(ii) the disclaimer for `cascaval Pintea',
(iii) the insufficient distinctiveness of the
device;
(2) the identity of the products and
(3) the risk of association is clear as
there is the possibility that consumers
would consider that there is a link
between the previous trade mark and
the contested mark.
Comments:
We consider the decision of the Court
as of quite high importance, not only for
Nutricia which invested large sums of
money in establishing a reputation for its
Milupa trademarks in Romania, but also
as a precedent with regard to the notion
of high distinctiveness in Romania.
The decision of the Bucharest Court of
Appeal is final and binding following a
second appeal filed by Avi at the Supreme
Court of Romania which was rejected by
the Supreme Court of Romania on
procedural grounds on 1 April, 2014.
The decision of the Bucharest Court of
Appeal mentioned above will most
probably be followed by other courts.
In this respect, our personal view is that
more pharmaceutical and nutritional
companies can now take similar actions
based on this case and can rely on their
previous well-known trade marks or
registered trade marks with reputation to
request the annulment of other identical
or similar trade marks, provided that
such identical or similar trade marks are
within the 5 years status of limitation
period provided by law.
5
Inherent and acquired distinctiveness seen by the
Romanian courts
Andra Musatescu, Andra Musatescu Law & Industrial Property Offices, Romania
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- milapo being the principal element of the trade mark,
- the existence of a disclaimer for `cascaval Pintea',
- the high distinctiveness of the CTMs which was not only inherent, but also acquired by
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- the beginning of the trademark being of a high importance,
- the identity for some of the products and the similarity for the remaining of the products for
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- risk of confusion and association.
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