(Selection and processing by Alisa Valeria Toma)
(Selection and processing by Nicoleta Elena Hegheș)
Viorel Roș**, Andreea Livădariu***
Abstract
The existence of signs registered as trademarks (national, European, international) is necessary in the public interest, as they serve producers of goods and services and consumers alike. While any sign may in principle constitute a trademark if it is capable of distinguishing the goods and services of one undertaking from those of other undertakings and if it can be represented in a register (of trademarks) in such a way as to enable determination of the subject-matter of the protection conferred, the scope of registrable signs is limited by two categories of grounds established by law (EU Regulation) with a view to: (i) the effective protection of the rights previously acquired by other persons and the prevention of the risk of confusion/association between the goods/services of different traders, which are “relative grounds for refusal of registration”, and (ii) the prevention of registrations and, where appropriate, the invalidation of registrations of the signs which, objectively, cannot constitute trademarks for intrinsic reasons (impossibility of representation, lack of distinctiveness, shape required by the nature of the goods, shape necessary to obtain a technical result, shape which gives substantial value to the product), or extrinsic ones (they must be available to everyone because they are of use to trade in general, or are misleading as to the nature, quality or geographical origin of the product/service, are protected against use in trade as being “of special public interest” and belong to, and are used by, the states, international organizations, and/or other public entities, including coats of arms, logos, seals, Olympic signs, but also those which are contrary to public order and public morality), which qualify as “absolute grounds for refusal of registration”.
The grounds for refusal of registration and/or, where appropriate, for declaration of invalidity of registered trademarks on account of coming into conflict with public order or public morality in the European Union and in the USA are not few, quite the opposite, but the relevant jurisprudence is not uniform. For example, of the 81 applications for registration as trademarks of a number of signs, among them the word “mafia”, 51 were rejected, 20 were granted, and 5 are under examination, one of the applications (for the Coffemafia trademark) was granted in 2020, although in 2016-2018, the Boards Appeal and Revocation (Cancellation) of the EUIPO, and subsequently the EU Court, at the request of the Italian Republic, ruled the “La Mafia se sienta a la mesa” trademark to be invalid on the grounds that the word “mafia” was contrary to public order and its use was detrimental to public interest. However, despite the “Fack Ju Göhte” trademark being ruled to be contrary to public morality by the EUIPO and the EU Court, the Court of Justice of the European Union allowed its registration by ruling it was not contrary to public morality. In the USA, which seems to have an extremely interesting and well-reasoned jurisprudence, things aren’t any different. A number of six trademarks containing the word “Redskins” (red skin) belonging to the Washington Redskins football team (currently under a different name), registered in the 60s and 70s, challenged at registration in 1992, then in 2014, after a first decision rejecting the application, following a second application (supported by the US President and 50 senators), were revoked on the grounds of being discriminatory against the Native Americans. However, the “The Slants” (from “slanted-eye”, a pejorative term used to describe Asians) walked an entirely different path.
The application (filed in 2006) to register it as a trademark for entertainment services by an all-Asian band of the same name (The Slants) was rejected by the U.S. Patent and Trademark Office - USPTO. Then, after a lengthy legal battle it was allowed for registration, with the courts, including the Supreme Court, ruling that the Lahman Act (i.e. the U.S. trademark law) provisions on the discrimination clause are contrary to the Constitution and the fundamental right to free speech. These judgments, plus another one on the sign for which registration was requested, and refused, as “CANNABIS STORE AMSTERDAM”, an EU trademark, are underlying our examination of such notions as “general/public interest”, “public order” and “public morality”, based on the finding that while important and used frequently, they are neither defined nor analyzed in the legal doctrine and jurisprudence, and are used as something that needs no explanation. Such a need exists, though. After analyzing them, we were able to issue our (rather critical) opinions on the EU Court judgment of 15 March 2018 that ruled the invalidity of the “La Mafia se sienta a la mesa” trademark, which we find to be wrong on the merits and, in any case, to be lacking the necessary supporting documents, while also infringing the fundamental right to free speech. However, we also found that the revocation of the “La Mafia se sienta a la mesa” trademark on the grounds of conflicting with the public order did not serve its purpose because it is not possible to prohibit the use of the sign as an unregistered trademark, because that sign is still successfully in use, because the network of restaurants that continue to use it is thriving and will even expand to other countries, and because the EU Court's decision (which probably would not have been upheld by the CJEU if appealed, as we could conclude from analyzing the judgment issued in the “Fack Ju Göhte” trademark) has contributed to its growing reputation, so it may be claimed as a well-known trademark in the future, which makes the victory of the Italian Republic, which filed the application for declaration of invalidity, a bitter one. And also because the word MAFIA is at the centre of the debate, we considered it important and sought to identify its origins and uses, as well as denotations and connotations.
* Acest articol a fost anterior prezentat, în limba engleză, în cadrul Conferinței Internaționale „Challenges of the Knowledge Society”, care a avut loc la București, 19 mai 2023 și publicat în limba engleză în volumul conferinței menționate.
** Profesor univ. dr., Universitatea „Nicolae Titulescu” București, Facultatea de drept, avocat coordonator SCA „Roș și asociații”, This email address is being protected from spambots. You need JavaScript enabled to view it..
*** Asist. univ. dr., Universitatea „Nicolae Titulescu” București, Facultatea de drept, avocat asociat This email address is being protected from spambots. You need JavaScript enabled to view it..
George-Mihai Irimescu**
Abstract
Although Artificial Intelligence does not represent a new concept, it seems that only in the recent years it started to have a massive impact on people’s lives, including on their economic behavior. As a consequence, Artificial Intelligence has taken by storm the world of Intellectual Property. While its advantages and disadvantages are still not clearly defined and its benefits and threats are still being debated, the presence and influence of Artificial Intelligence can no longer be disregarded. In this context, its intersection with intellectual property rights, including with aspects concerning trademark protection, is inevitable. Artificial Intelligence became a very useful tool for intellectual property offices, being mainly used to create an interface with users, especially with trademark owners and trademark applicants, to assist them in online filings and also in connection to examination proceedings. However, although Artificial Intelligence came more to the aid of applicants, it became more and more helpful to examiners as well. More importantly, Artificial Intelligence changed the consumers’ buying habits, and this aspect puts the classical trademark role and functions into a new perspective. This being said, the present paper aims to find which are the evolutions (or possible evolutions) in connection to trademark protection and practice of intellectual property offices brought by the presence of Artificial Intelligence tools, both from the perspective of the national offices and from the point of view of consumers.
* Acest articol a fost anterior prezentat, în limba engleză, în cadrul Conferinței Internaționale „Challenges of the Knowledge Society”, care a avut loc la București, 19 mai 2023 și publicat în limba engleză în volumul conferinței menționate.
** Doctorand al Universității Nicolae Titulescu din București, This email address is being protected from spambots. You need JavaScript enabled to view it.;
Cristiana Budileanu*
Abstract
In the public space there is a heated debate about the extension of the public domain with works which are no longer protected through copyright and there are a lot of advocates for this idea, including for the decrease of the duration of protection of works through copyright. However, there are also the advocates for the protection of material and immaterial goods that are of high value and significance for the community from which they originate, and which are no longer protected through copyright. The first group is arguing that by continuing to protect such goods after the intellectual property has elapsed, irrespective of the system of protection, we harm the public domain on which people rely to create new works. The second group is arguing that not granting a special protection for such goods will harm both spiritually and financially the communities and their members.
Both groups seem to have logic arguments. However, a balance must be found, and we think that above all, we should try to find this balance by giving priority to the protection of goods which are of high value and significance for the community from which they originate. The purpose of this paper is to present how these goods which are of high value and significance for the community from which they originate are protected and what means for further protection are trying to be found with a focus on Romanian legislation and case-law.
* Acest articol a fost anterior prezentat în cadrul Conferinței Internaționale „Challenges of the Knowledge Society”, care a avut loc la București, 19 mai 2023 și publicat în limba engleză în volumul conferinței anterior menționate.
* Doctorand, Facultatea de Drept „Nicolae Titulescu” Universitatea din București; avocat în Baroul București (e-mail: This email address is being protected from spambots. You need JavaScript enabled to view it.).
Partners
Conținutul acestui site este proprietatea ASDPI. Nu este permisă folosirea unor pasaje, articole sau orice parte din conținutul acestui site, fără acordul scris din partea ASDPI.