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
SUMMARY

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 or services different from those which are sold or provided under said trademark. According to Law no. 84/1998, the notorious (well-known) trademark is the trademark which... (see full summary)

 
FREE EXCERPT
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

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