The Trade Marks and Designs Registration Office of the European Union
A Romanian sportswear company has lost its International Registration (IR) covering the EU following an invalidity application by a Slovakian firm selling similar products. Both companies had pre-existing national registrations for figurative trade marks containing the word “Zajo”, which were in use before the countries joined the EU.
The Romanian firm, S.C. GOTECH S.R.L.,whose national mark was the younger of the two, applied for an international trade mark designating the EU with a priority date in 2006, by which date Slovakia was a member of the EU, and was granted it in 2007, giving it the same rights and coverage as a CTM.
At the priority date, Romania was not yet a member of the EU, and hence could potentially benefit from some transitional arrangements protecting marks from any conflicting registration which became applicable as a consequence of accession.
(earlier mark) (contested CTM)
However the Slovakian company, KRALIK-ZAJO, JURAJ, asked for the IR to be declared invalid on the grounds of its pre-existing national mark. The invalidity applicant said it was the original user of the mark “Zajo”, which meant “rabbit” in Slovakian children’s language, and had been using the sign in the course of trade since 1996 – a fact well known by the CTM proprietor, with whom they had a business relationship.
The CTM proprietor, opposing the invalidity, denied they had acted in bad faith and said that the applicant failed to file an opposition when they had the opportunity. The Romanian company said that since the IR was first registered as a Romanian national mark and then as an IR designating the EU with a priority date before Romania was a member state of the European Union the applicant’s mark “Zajo” could have a priority in respect of the contested CTM only as regards Slovakia.
OHIM’s Cancellation Division examined the ground for invalidity under Article 8(1)(b) CTMR in respect of the earlier Slovakian trade mark.
The Cancellation Division ruled that while the original Romanian trade mark was registered before the date of accession of that country to the EU, and in particular, more than six months before that date, this only meant that the original Romanian registration would be protected from any conflicting registration that became applicable as a consequence of the accession. It did not mean that an IR registration based on that right was protected against an earlier right applicable within the CTM system. Since the Slovakian mark was already a national right within the CTM system it could be invoked by the applicant pursuant to Article 53(1) CTMR.
Declaring the IR invalid with respect to the EU the Cancellation Division said: “A different interpretation would lead to the consequence that the IR in question would be granted disproportionate protection against any earlier right only because Romania had not yet joined the EU at the time of the designation of the EU.”