Romania Rominvent SA
Romania
Descriptive marks versus
suggestive marks: a case
study
By Alina Martinescu, Rominvent SA
According to the Explanatory Dictionary of
the Romanian Language (DEX), the adjective
‘descriptive’ applies to anything that describes
or contains a description, while the adjective
‘suggestive’ applies to anything that has the
power or capacity to make a suggestion or
inspire certain representations or ideas.
Based on these definitions, it could be
concluded as follows:
• The descriptive character of a trademark
refers to the capacity to describe a thing
and to assign it a meaning indirectly (ie,
objective character); and
• The suggestive character of a trademark
refers to the capacity to generate at least
two ideas and meanings, thus leaving it to
an individual to choose the most suitable
meaning (ie, subjective character).
The analysis of these two types of
character has often posed problems,
particularly in the context of converging
procedures at EU level and when attempting
to enforce the Law on Trademarks and
Geographical Indications (84/1998) when
examining a trademark on absolute grounds.
COLOR 1 mark
This issue was highlighted by Trademark
Registration Application MI 1130929.
The application was for the word mark
COLOR 1, which would cover hair lotions
and preparations for haircare, cleaning,
tinting, colouring, bleaching and fixing. The
application designated 55 countries, including
Romania and 21 other EU member states.
Following ex officio examination:
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•
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1 4 states, including Romania, issued
notifications of provisional refusal based
on the absolute ground that the mark
lacked distinctiveness;
eight states approved the mark on absolute
grounds and entered the opposition and
comment process; and
33 states did not issue notifications of
provisional refusal (as of October 18 2012),
at least in regard to absolute grounds.
The jurisdictions in which the mark
successfully passed the examination
on absolute grounds included Benelux,
Switzerland, France, the United Kingdom
and Italy, while those in which it received a
notification of provisional refusal on absolute
grounds included Romania, Moldavia, Spain,
Portugal, Korea and Japan.
Interestingly, the mark received a
notification of provisional refusal based on a
lack of distinctiveness in the Czech Republic,
but did not receive a notification of provisional
refusal in Slovakia; it received a notification
of provisional refusal in Russia, but not in
Ukraine; and it received a notification of
provisional refusal in Korea and Japan, but not
in China. In all of these cases, the countries
mentioned share linguistic similarities (due, at
least in the first two cases, to common state
origins).
Analysing distinctiveness
As the analysis of the trademark’s
distinctiveness against the relevant list of
goods and services depends on the language
of the consumers to which the trademark is
directed and on the commercial practices in
the designated territory, the distinctiveness
analysis considered here is limited to Romania.
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The notification of provisional refusal
issued by the Romanian Patent and Trademark
Office (OSIM) provided that the COLOR 1
trademark:
• lacked distinctive character (under Article
5b); and
• consisted exclusively of signs or
indications that could serve in trade to
designate the quality, intended purpose or
characteristics of the product (Article 5d),
and thus was a descriptive trademark.
Based on the DEX definition, a trademark
is not descriptive if it unusually expresses an
usual thing.
The word element ‘color’ was analysed in
light of the relevant goods (haircare, cleaning,
tinting, colouring, bleaching and fixing) and
considered in three languages:
• in English – color/colour (colour,
colouring, shade);
• in French – couleur; and
• in Romanian – culoare.
Compared to the goods in the list, the
element ‘color’ or ‘culoare’ did not describe
the product, its characteristics or its intended
purpose. In Romanian, the name ‘Color’ for
haircare products is fanciful; a descriptive
name would be ‘colorare’ or ‘colouring’.
However, the trademark was not COLOR,
but rather COLOR 1. Compared to the same
list of goods:
• the name Color 1 was descriptive (for the
products in the list) if the consumer could
not assign it a single meaning; and
• the name was suggestive if, in terms of the
same list, the consumer could assign it at
least two meanings (second meaning).
As associated with the listed haircare
goods, the name Color 1 could have the
following meanings:
• a number one (quality, price, public
preference) product (dye, bleacher,
shampoo) for hair care;
• a number one (quality, price, public
preference) product or dye for hair
colouring or bleaching;
• a number one colour in a range of colours; or
• by using the product, the hair returns to
the first (original) hair colour.
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As associated to the listed haircare
products, the name Color 1 would suggest to
the consumer several meanings from which
the consumer could choose. Consequently,
the name Color 1 was suggestive (and not
descriptive) for the goods in the list.
Distinctive character
The notification of provisional refusal issued
by OSIM also provided that the trademark
COLOR 1 lacked distinctive character (Article
5b). A search for the name ‘color’ in Class
3 in the Romanian trademark database
brings up 754 trademarks; thus, that name
is customary and consequently lacks
distinctiveness. However, the application
was for COLOR 1, not just COLOR. A search
for COLOR followed by a number in Class
3 identified the following Community
trademarks:
• COLOR 2000 for haircare preparations,
shampoo – registered as a Community
trademark in 1998; and
• COLOR 10 for hair lotions – registered as a
Community trademark in 2010.
The names COLOR 10 and COLOR 1 are
compared opposite.
In conclusion:
• the two marks are conceptually similar
trademarks for identical products and both
are owned by the same party.
• the trademarks have the same word
element (‘color’) with an English meaning.
• the first mark was registered by the Office for
Harmonisation in the Internal Market, which
examined the mark in English, while the
second was provisionally refused by OSIM,
which examined the mark in Romanian.
Further, the trademark COLOR 1 was
registered for the same list of goods in the
country of origin, Germany.
Might it be possible to invoke Article
6quinquies of the Paris Convention (an ‘as
is’ trademark) to overcome the notification
of refusal? At least theoretically, the answer
is no, because the refusal issued by OSIM
invoked the mark’s descriptiveness, its lack of
distinctiveness and the fact that the name had
become customary in trade. Article 6quinquies
reads as follows:
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Romania Rominvent SA
Trademark type
COLOR 10
Word mark
COLOR 1
Word mark
Connotation
English
English
Examination in
English
Romanian
List of products
Haircare products
Haircare products
Application for registration in
European Union
Romania
Status
Registered
Notification of provisional
refusal
Trademarks suggest
Top products
Number 10 in the colour
palette
First-class products
Number one in the colour
palette
A. 1) Every trademark duly registered in the
country of origin shall be accepted for filing
and protected as it is (telle quelle), in the
other countries of the Union, subject to the
reservations indicated in this Article…
B. Trademarks covered by this Article
may be neither denied registration nor
invalidated except in the following cases…
2) when they are devoid of any distinctive
character, or consist exclusively of signs
or indications which may serve, in trade,
to designate the kind, quality, quantity,
intended purpose, value, place of origin
of the goods, or the time of production,
or have become customary in the current
language or in bona fide and established
trade practices of the country where
protection is claimed.
Comment
In conclusion, as regards Trademark
Application MI 1130929 for COLOR 1 in
Romania, at least from the point of view of
practice convergence, the mark should have
been registered. and hasn’t been picked up as
being incorrect. and hasn’t been picked up as
being incorrect.
In 2013 a Community trademark
application for COLOR FIRST was filed for
similar products (haircare products; hair
colouring and bleaching preparations). In
terms of this mark, it will be interesting to
see the evolution of a registration for absolute
grounds and all possible conflicts with the
COLOR 1 or COLOR 10 mark.
In 2011 a Community trademark
application for BRILLIANT COLOR was
filed for similar products in the same class.
The application was correctly rejected on
absolute grounds.
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Contributing profiles
Rominvent SA
Rominvent SA
Ermil Pangratti Street No 35, Sector 1
Bucharest 011882, Romania
Tel +40 21 231 2515
Fax +40 21 231 2550
Web www.rominvent.ro
Alina Martinescu
Attorney at law
[email protected]
Alina Martinescu graduated
from the Faculty of Law at
Bucharest University and
holds master’s degrees in
both private and criminal law.
She is an attorney at law, a
trademark attorney and a
member of the Romanian
National Chamber of Industrial
Property Attorneys and the
Office for Harmonisation
in the Internal Market. Ms
Martinescu has worked in
the industrial property field
since January 2008. She gives
advice and represents clients
before the Romanian Patent
and Trademark Office and the
courts in counterfeiting and
infringement cases related
to trademarks, trade names,
domain names and copyrights.
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