The notorious, reputed and famous trademarks

• Author: Andreea Liv?dariu
• Position: PhD Candidate, Faculty of Law, 'Nicolae Titulescu' University of Bucharest; lawyer in the Bucharest Bar Association (e-mail: andreea_livadariu@yahoo.com).
• Pages: 31-37

LESIJ NO. XXII, VOL. 1/2015

THE NOTORIOUS, REPUTED AND FAMOUS

TRADEMARKS

Andreea LIVĂDARIU*

Abstract

The owner of a trademark that has a reputation in Romania or in the European Union may

request to court to forbid the infringer from using, without its consent, a sign identical or similar to its

trademark, but for products o r services different from those which are sold o r provided under said

trademark. According to Law no. 84/1998, the notorious (well-known) trademark is the trademark

which does not necessarily have to be registered under the Trademark law protection. The Romanian

doctrine sustains that famous trademarks do exist.

In this paper, we shall attempt to find (if it really does exist) the difference between notorious

(well-known), reputed and famous trademarks, the criteria by means of which these trademarks shall

be distinguished and the evidence by means of which the notoriety, reputation o r fame of a trademark

may be argued. We shall also present the legal regime and our analysis will be based on the Trademark

law, doctrine and case-law studies.

Keywords: notorious (well-known) trademarks, reputed trademarks, famous trademarks,

likelihood of confusion, likelihood of association.

1. Introduction *

The Romanian literature speaks of

notorious trademarks, reputed trademarks,

famous trademarks

1

(or of the highest

repute

2

), as categories of distinctive signs of

commerce benefiting from different legal

regimes. Different and somehow prefe-

rential, given the fact that, in order to benefit

from legal protection, distinctive trademarks

must usually be recorded, and thus must pass

through the OSIM (State Office for

Inventions and Trademarks) filter.

But do these types of trademarks really

exist or are they just a creation of doctrine?

How co uld they be defi ned and what

differentiates them? What is the legal status

* PhD Candidate, Faculty of Law, “Nicolae Titulescu” University of Bucharest; lawyer in the Bucharest Bar

Association (e-mail: andreea_livadariu@yahoo.com).

1

Viorel Roș, Octavia Spineanu-Matei, Dragoș Bogdan, Dreptul proprietății intelectuale. Dreptul p roprietății

industriale. Mărcile și indicațiile geografice (Bucharest: All Beck, 2003), 100-112.

2

Yolanda Eminescu, Regimul juridic al mărcilor (Bucharest: Lumina Lex, 1996), 83-85.

they enjoy a nd what are their means of

protection?

Hugo Boss, Versace, Kalvin Klein,

Knorr, Lavazza are unregistered trademarks

in Romania, which the Romanian la w

protects. Are they notorious trademarks,

reputed trademarks or famous trad emarks?

What is their legal regime and how can they

be protected against usurpers?

These are the questions we ai m to

answer further below.

2. Are there really famous and

reputed trademarks?

According to Law no. 84/1998

(hereinafter referred to as the Trademark

Law), the notorious trademark is the