Crossing the Line in Trademark Registration in Romania

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Published in “Managing Intellectual Property”, 2010

For more than 50 years, Sapanta, a Romanian village in the Maramures County, is famous for the unique way in which the local cemetery is telling the story of the life of its inhabitants. Its initial creator – the craftsman Stan Ioan Patras – has done something that no one has ever done in Maramures, or elsewhere in the world – has combined sculpture, color and lyrics, and has turned this usually sad place into a joyful place to think, visit and remember.

Currently a UNESCO World Heritage site, the “Merry Cemetery” of Sapanta has been declared the first funerary monument in Europe and the second in the world after the Valley of the Kings in Egypt.

The unique character of this cemetery is given by the crosses sculpted in oak wood, vividly painted and engraved with rhymed epitaphs briefly describing the life of the deceased.

The dominant color of the crosses is blue, called “Sapanta blue”. With its eight hundred monuments of folk art the cemetery of Sapanta represents a true open air museum.

The crosses in the Merry Cemetery are hand made by the local wood carvers, and the shape of the crosses in the famous cemetery has been also taken over local craftsmen also for manufacturing souvenirs (in different sizes) for tourist that visit the area, attracted by the fame of the Merry Cementery.

The epitaphs on the crosses constitute a true chronicle of people’s life, often with an ironic note, in an anecdotic tone reason for which it was called the Merry Cemetery.

Opposite it is an example, which reads: “Oh, my poor mother-in-law, she can no longer rule the roost”.

In August 2008, Dumitru Pop Toader, one of the craftsmen that manufactures crosses for the Merry Cemetery has filed with the State Office for Inventions and Trademarks (SOIT), a trademark application consisting of the verbal element SIP DPT (standing for Stan Ioan Patras – Dumitru Pop Toader) and a figurative element representing the shape of the crosses in the Merry Cemetery, and claiming the blue color. The trademark was filed for registration for products in class 20 – furniture, frames, wooden products and wooden crosses.

Following the registration of the trademark, Mr. Dumitru Pop Toader (former apprentice of the creator of the Merry Cemetery – Stan Ioan Patras) started to send notifications to the craftsmen in Sapanta manufacturing crosses and souvenirs, by which he requested them to cease and desist manufacturing of such crosses, in any size. Moreover, Mr. Toader has repeatedly declared to the media that he intends to ask all other craftsmen to pay 30% of the money obtained from manufacturing the crosses.

As a consequence of these notifications, as well as the criminal complaints filed by the trademark owner, Turda Toader, Stan Gheorge, Stan Ioan and Stan Teodor (also former apprentices of the creator of the Merry Cemetery) have filed action in cancellation of the combined trademark SIP DPT, due to lack of distinctive character as well as for being registered in bad faith.

The plaintiffs claimed that the figurative element of the trademark registered by the defendant is identical, both in shape and in color, with the crosses in the Merry Cemetery, crosses that have become usual in this area over the years. Moreover, even the defendant, in the notices sent to the plaintiffs, refers to the figurative element of the trademark as “Sapanta type cross”. The fact that the defendant has added to this figurative element a series of characters cannot, in itself, remove the lack of distinctiveness of the trademark, as a whole, or the usual character of its figurative element.

Moreover, the plaintiffs claimed that the defendant has registered the trademark in bad-faith. Thus, although he knew that the plaintiffs have been using the Sapanta type cross for over 30 years (the notices sent after the registration of the trademark stand for such fact), the defendant has applied for the registration of the trademark with the very purpose to forbid the use of such cross by its competitors, which would refuse to pay royalty for the use thereof.

The main argument used by the defendant when asking the court to deny the cancellation request filed by the plaintiffs, as supporting his good faith in the registration of the trademark, refers to the copyright that he allegedly has over the original artistic work that represents the object of the disputed trademark.

Thus, in his view, the trademark includes an artistic work that is also subject to copyright, copyright that was transmitted to the defendant based on a notarized statement issued by the heir of Stan Ioan Patras. By such statement, the “right to continue manufacturing the traditional crosses” was granted to the defendant.

The plaintiffs have counter-argued that copyright may only cover an actual work (i.e., the crosses created by Stan Ioan Patras), and not an idea or a concept.

After a trial that lasted more than 18 months, Bucharest Tribunal has cancelled the trademark as lacking distinctive character (for crosses), and as being registered in bad-faith (for all the other products for which it has been registered).

The decision is subject to appeal.

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