The Bucharest Court recently ruled in a case in which a Romanian company, M Car Trading SRL, contested a State Office for Inventions and Trademarks (SOIT) decision (17726/3/2019) that favoured Bayerische Motoren Werke (BMW) Aktiengsellschaft. The decision provides insight into the court's practice in assessing the reputation of earlier trademarks when invoked as relative grounds against subsequent trademark applications and underlines the importance of documenting and providing sufficient evidence to support a claim of reputation.
BMW filed an opposition against M Car Trading's application for the Romanian word mark M CAR TRADING (M 2014 04859) for goods in Class 12 and services in Classes 35 and 37. During the opposition stage, the application was amended – the applicant deleted the part of the application concerning goods in Class 12.
In its opposition, BMW invoked its earlier rights in:
- the EU word mark M CARS (004945267), registered for goods in Classes 12 and 28; and
- the international figurative marks IR 603895, designating Romania (Figure 1), and IR 1000390, designating the European Union (Figure 2), registered for services in Class 37, among others.
Figure 1: international figurative mark IR 603895
Figure 2: international figurative mark IR 1000390
BMW based its opposition on the relative grounds for refusal provided under Article 6(1)(b) of the Trademarks Law (84/1998) as republished (ie, similarity of signs and likelihood of confusion), as well as on the reputation of the earlier M and M CARS trademarks under Articles 6(3) and 6(4)(a) (now Article 6(3)(a)) of the same law.
SOIT Appeals Committee decision
Although the Opposition Division initially rejected the opposition, BMW overturned the decision during the appeal stage before the SOIT. The SOIT Appeals Committee established the applicability of the aforementioned provisions and recognised the reputation of the M and M CARS trademarks. In its motivated decision, the committee noted that the conflicting marks were similar overall and that their dissimilarities were insufficient to exclude a likelihood of confusion. Further, the committee concluded that BMW's earlier marks were reputed and that Romanian consumers could be misled into believing that the applicant's services in Classes 35 and 37 under the filed application, M CAR TRADING, originated from BMW.
The applicant subsequently appealed the SOIT Appeals Committee's decision before the Bucharest Court.
Similarity of marks
In its decision, communicated to the parties in April 2021, the court reconfirmed the SOIT Appeals Committee's findings, noting that the applied-for mark, M CAR TRADING, and BMW's word mark, M CARS, were visually similar to a high degree. The court also noted that the degree of visual similarity between the mark applied for and BMW's earlier figurative M marks was slightly lower, given that they were figurative marks.
However, the court held that the term 'M CAR' constituted the dominant element of the mark M CAR TRADING, which was quasi-identical to the word mark M CARS. Further, the court held that the additional term, 'trading', was generic and did not sufficiently differentiate the marks to avoid a likelihood of confusion.
The court noted that the similar beginnings of the marks (ie, 'M CAR' and 'M CARS') would significantly influence a consumer's general impression thereof.
Comparison of goods and services
Regarding the comparison of goods and services, the court held that the remaining services for which the M CAR TRADING application sought protection in Classes 35 and 37 were complementary to the goods protected by the earlier word mark M CARS in Class 12. Further, the earlier figurative M marks were protected for identical services in Class 37.
Thus, the court concluded that despite the lower visual similarity between the earlier figurative M marks and the filed application, their conceptual similarity (due to their direct link with BMW's M series and models) and the identity of the services in Class 37 were sufficient to find that Article 6(1)(b) of the Trademarks Law applied in relation to both the figurative marks and the earlier M CARS word mark.
Reputation of marks
Regarding the applicability of Articles 6(3) and 6(4)(a) (now Article 6(3)(a)) of the Trademarks Law concerning reputation, the court pointed out that the analysis had to consider the reputation of the earlier marks and not the reputation of the applied-for mark, which the applicant had attempted to rely on in sustaining the appeal.
On this point, the court reconfirmed the reputation of the earlier M marks as directly associated with the house mark BMW in the mind of the public. The court referenced a 2010 SOIT decision (222/31/10/2010), which had also found such marks to be well known among a Romanian audience. Further, based on the significant amount of evidence that BMW had submitted, the court also upheld the reputation of the word mark M CARS and, implicitly, the M CARS division of BMW and the public's association of such trademark with the BMW house brand.
Considering the supporting evidence, the court concluded that the M division was known in the automotive market by a significant part of the public and a sufficiently large number of consumers and had thus acquired an increased distinctive character through use which would be infringed if similar marks (eg, the applicant's M CAR TRADING word application) were used on the market.
Therefore, the court rejected M Car Trading's appeal as ungrounded. However, the court's decision is not final and was appealed the applicant in early May 2021 before the Bucharest Court of Appeal.
This case is as an example of the practice of both the SOIT and the Bucharest Court in assessing reputation in trademark conflicts, especially when the earlier marks found to be reputed do not cover the same goods or services as those filed under the contested application. Further, the decision reconfirms the importance of submitting sufficient evidence that attests to the degree of knowledge of the mark among the relevant public for the relevant bodies or competent courts to find in favour of a reputation claim in contradictory proceedings.
