Romanian Trademark Office Agrees on the Low Distinctiveness of the “LIMO” Trademark in Relation to Goods in Class 32 (Lemonade)”
Published in “Managing Intellectual Property – International Briefing Reminder”, 2010
The recent decisions issued by the Trademark Re-Examination Committee of the Romanian State Office for Inventions and Trademarks (“SOIT”) in the three cases LIMO vs. VOSLAUER BIOLIMO, currently subject to appeal pending with the 5th Civil Section of the Bucharest Tribunal, shall have an important impact on the question of LIMO trademark distinctiveness for products in class 32, and may represent an important instrument to be taken into account by the Office for Harmonization in the Internal Market (“OHIM”) when deciding upon the pending oppositions filed by the titleholder of the LIMO trademark against Community and International trademark applications containing this term.
Mr. George Ivanescu is since 2005 the registered owner of the national word mark LIMO no. 070827 registered for all the goods in class 32, while Voslauer Mineralwasser AG (“The Applicant”) is, since 2007 the holder of three international registrations for the combined marks VOSLAUER BIOLIMO having Romania, among others, as country designated for protection and filed for protection also in relation to certain goods in class 32.
On February 2nd 2008 Mr. Ivanescu filed with SOIT opposition against the registration of VOSLAUER BIOLIMO trademarks for goods in class 32 in Romania, invoking the rights deriving from his LIMO national word mark.
In October 2008, SOIT’s Examination Committee issued Decisions nos. 2704, 2705 and 2706 by which the Committee rejected the opposition and ruled for the continuation of the registration procedure for the individual, combined trademarks VOSLAEUR BIOLIMO, considering that the trademarks in conflict are not similar.
Mr. Ivanescu continued to challenge the registration of the three VOSLAUER BIOLIMO trademarks by filing an appeal with SOIT’s Re-Examination Committee, in July 2009, claiming not only that the trademarks are similar, due to the existence of the common term “LIMO”, but also that there is an obvious risk of confusion between such marks.
Strangely enough, Mr. Ivanescu further mentioned in his arguments that the distinctive character of his “LIMO” word mark derives from the fact that the term limo is the short form for the English word – limousine, and it shall be interpreted as such also by the Romanian consumers (although no such term is used in Romania for designating the Romanian word “limuzina”).
The Re-Examination Committee ruled, in agreement with the Applicant’s arguments, that the earlier trademark LIMO has a weak distinctive character in relation to the goods in class 32, due to the fact that the term LIMO is suggestive for the Romanian consumers who most likely will interpret it as a reference to the word “lemonade” – in Romanian “limonada” – defined by the main Romanian language dictionary as a “refreshing beverage made from lemon juice (or a lemon substitute), water and sugar; sparkling refreshing beverage made from fruit syrup”. Further more, the Committee noted that due to the fact that the word mark LIMO gained protection for the generic list of goods in class 32, this will also cover beverages such as lemonade, and that it is quite unlikely that the Romanian consumers will ever interpret the word LIMO as deriving from the word “limousine”.
Based on the fact that the protection of trademarks with a lower distinctive character is not as wide as for those with a high degree of distinctiveness, the Committee considered that the differences between the marks in question are sufficient to exclude any likelihood of confusion for the relevant public.
At the current stage of the proceedings, Mr. Ivanescu is challenging the three decisions issued by the Re-Examination Committee in front of the Bucharest Tribunal, who shall have to consider:
- If the only point of similarity between the marks – the term LIMO – and the similarity between the goods in class 32 to which they relate are sufficient for determining a likelihood of confusion of the trademarks in conflict for the Romanian consumers;
- If the LIMO word mark has sufficient distinctive character when used in relation to the certain goods in class 32 in order to be successfully opposed to the registration of other trademarks, such as VOSLAUER BIOLIMO, that include in their verbal part such verbal element for similar goods in this class.
The answers to be provided by the court to such questions through the decisions with respect to the conflict between LIMO and VOSLAUER BIOLIMO shall be relevant not only for these particular situations, but also for the other trademark applications filed at European Community level, against which Mr. George Ivanescu has already initiated opposition proceedings based on his word mark LIMO, such as CTM application LIMOMIX no. 008424921, CTM application GAUDI LIMO no. 007369929, CTM application fritz – limo no. 007148984, as well as the international trademark designating the EC BLIMO no. 000927799.
Also, the decision of the Romanian court might be relevant for the holders of the trademark applications LIMOLIMO (IR designating the EC no. 000915333 and SENSALIMO CTM application no. 006504881) that have already been withdrawn from registration following the oppositions filed by Mr. Ivanescu, based on the same word mark “LIMO”.
Last, but not least, the decisions issued by the Committees within SOIT confirming that LIMO national mark has a low distinctive character in relation to the goods in class 32 for which protection was obtained, together with the Bucharest Tribunal’s rulings that will be given in the current pending litigations (if maintaining the conclusions of SOIT’s Committees) may have serious implications for trademark owners seeking to register trademarks that include in their verbal parts terms that have a low distinctive character in relation to the goods for which they wish to obtain protection, but which were previously protected as trademarks.