In Romania, the legal provisions regarding the obligation to use a trade mark and the applicable sanction for the failing to use it have been adopted relatively recently adopted, through Law 84/1998 on trade marks and geographical indications (hereinafter called Law). This provision gives two benefits: it allows the registration of new trade marks which that are identical or similar to previous, not-used ones, and it incentives a trademark owner to preserve their rights thereupon by using such.
This paper intends to approach the notion of "interested person" as specified in Law 84/1998 and to circumstantiate the sphere of the persons that belong with this category and that can justify an interest in promoting the forfeiture action as specified in Art. 45 in the Law.
Not using the trademark for an uninterrupted 5-year period implies that the trademark is no longer capable to fulfil the commercial function of the trademark. By the not use, the trademark does not allow the consumers to easily and quickly chose a verified product, which earned a reputation, the competition function being no longer achieved.
It therefore arises that the non-fulfilment of such functions of the trademark would harm in the first place the business competitors of the unused trademark’s owners. Hereafter we shall analyse the types of business competitors can justify an interest in filing a forfeiture action.
1. The entire jurisprudence case agrees in accepting in this sphere the owners of the trademark registration applications to which ROPTO replied by issuing a provisional or final rejection based on a previous similar or identical trademark. In this case, the claimant in a forfeiture action is not, actually, the owner of the trademark right, but merely of a trademark registration application. However, the interest in promoting a forfeiture action is legitimate, the achievement of a legally recognised subjective right, according to the commercial and social purpose being pursued, i.e. the right to achieve the trademark and to use it in the business activity.
Although things appear clear, in case of existence of a Provisional Rejection Advise, in the practice certain hypotheses that gave rise to discussions appeared.
The first controversy appeared with regard to the circumstance when the forfeiture action was filed before the issue of the Provisional / Final Rejection Advise. In such case the problem whether the interest can be deemed borne and actual was raised. Starting from the legal provisions regarding the trademark registration and, in particular, from the fact that ROPTO, in the analysis of the merits of the trademark checks the fulfilment of both the relative and absolute reasons, we consider that the Provisional Rejection Advice does not generate a legal situation, but only confirms such a situation that can be proved with any evidencing means. For these reasons, we consider that a forfeiture action should not be rejected by reason that the Provisional Rejection Advice was not yet issued, as long as the interest can be proved through other evidencing means.
2. Another class of persons within the commercial competitors are the owners of previous/ulterior rights upon a trademark.
We raise the question if the interest is really proven, in the situation of a trademark owner who requires the forfeiture of another trademark owner of the rights offered by the previous or ulterior trademark, similar and unused, for the reason that the return of this trademark on the market may cause prejudices to it? Such an interest may be deemed as legitimate, born and present? At the first approach, in this situation, the interest seems rather economical – the desire of eliminating a competitor from the market, which does not justify a legitimate interest.
In our opinion, in such a situation, the forfeiture applicant must substantiate the legitimacy of its interest by proving its capacity of commercial competitor on the same market of service or goods. Thus, the legitimacy of its interest is proven, in this situation, by serving proofs certifying the effective use by the forfeiture applicant of its trademark and, as a consequence, the fulfil of the trademark’s identification function with the goods or the services for which the registration application was submitted. If the forfeiture applicant does not prove the effective use of its trademark, we consider to deal with a purely economical interest – of eliminating a competitor from the market – which cannot prove a legitimate interest and the Court should reject the forfeit case as lacking of interest.
To admit that the sole capacity of owner of a previous right upon a similar or identical trademark is sufficient for justifying an interest for submitting a forfeiture action would mean to admit that the law itself provided legal methods for eluding the 5-years prescription term provided for the action in annulment.
Actually, the two types of actions are sanctioning different legal situations: the action in annulment is sanctioning the non-observance of the legal provisions stating if the trademark is liable of registration on the registration moment and the forfeiture action is sanctioning the fact that the trademark is not fulfil its basic function, after registering it.
3. A third class of persons, which may justify an interest, are the ordinary commercial competitors, which are not the owners of a trademark registration application, nor of the registered trademark.
In this case, the plaintiff of the forfeiture action should prove the fact of being a defendant’s competitor in relation with the same class of goods and services.
The Law does not forbid the use of an unregistered trademark, as long as it not prejudices the owner of a trademark. A salesman who does not really use a trademark for goods or services similar to that protected by the trademark for which the forfeiture is requested and may prove this fact, is justifying, in our opinion, a legitimate, born and actual interest.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.