INTA's Trademark Reporter Romania case summary - Flags, Coats of Arms and Other Insignia (European Union)

By Aura Campeanu, published in the March/April 2012 edition of the IAR Trademark Reporter

In August 2010, observation notices were filed against 101 national trademark applications in the name of Silviu Vasile Prigoana, a Romanian individual, on behalf of the European Commission, the European Union’s executive body that represents and upholds the interests of the European Union. The applications were all composed, in part, of a figurative element depicting a circle of 12 gold stars (imitating the European Union emblem) placed on top of an abstract blue arch, and a word element in the form of a Romanian city name followed by the word “TV” (see the example below, illustration at left). (Filing observations is a newly introduced procedure in the process of trademark registration in Romania and is similar to the procedure set forth in Article 40 of the Community Trade Mark Regulation (CTMR) (Council Regulation (EC) No. 207/2009, Feb. 26, 2009). Specifically, Article 18 of the Romanian Trademarks Law (Law 84/1998 on Trademarks and Geographical Indications, as amended and republished in 2010) provides that within two months after publication of a national trademark application interested persons may present observations regarding the absolute registrability of the mark applied for, under Article 5 (absolute grounds of refusal).

The legal basis for the filed observations against the 101 applications was Article 5(1)(l) of the Trademarks Law. Article 5(1)(l) provides that registration shall be refused for trademarks that contain, without the permission of the competent authorities, reproductions or imitations of armorial bearings, flags, other emblems, abbreviations, initials, or denominations that are governed by Article 6ter of the Paris Convention and that belong to international intergovernmental organizations.

The European Commission argued that the applications in question each contained an imitation of the official emblem of the European Union, a circle of 12 gold stars on a blue background, which belongs to the European Union and is the sole symbol of the European Commission.

Following the filing of the observation notices, Silviu Vasile Prigoana abandoned his applications.

As a result of these observations and in order to clearly regulate the protection conferred in Romania to the European Union emblem, the State Office for Inventions and Trademarks inserted, in the Implementing Regulations to the Trademarks Law, a specific provision on protection of the European Union’s emblems. Accordingly, the Regulations currently provide in Article 20(14) that “… signs containing emblems or parts of the European emblem owned by the Council of Europe shall be refused registration.”