Sometimes your business is resting on a treasure, and you have no idea. Other times, you think you’ve struck gold, but everyone rushes to share the "vein." What is a trademark, why should you register and protect it, and how different (or similar) should your trademark be to function?
Learn more about this crucial yet complex domain from an interview Wines of Romania took Catalin Neagu, founder of ProtectMark and one of Romania’s most experienced attorneys specializing in intellectual property issues.
What is a trademark?
Wines of Romania: Let’s start with the basics: What is, what can be, and what cannot be a trademark?
Catalin Neagu: A trademark is a distinctive sign that must be able to differentiate the products and services of one entity from the products and services of another entity. There’s also a rule that it must be graphically representable. For verbal trademarks, this graphical representation comes from the name, the written word. That’s essentially the definition – trademarks must distinguish one company from another.
Wines of Romania: Recently, some restrictions have appeared, such as words like "Romania" or "Academy" cannot be used, or at least not in contexts that could mislead consumers into believing the company is more than it actually is… For example, something like the "Romanian Association for the Protection of the Blue Walnut," to joke a little.
Catalin Neagu: Yes, for instance, legislation doesn’t allow "Romania" to be used in a trademark’s name. Like "Vodka of Romania" or "Wine of Romania" for products that refer to Romania. However, we could register, for example, the "Romanian Journal of Public Administration." But if we request registration with OSIM (the Romanian State Office for Inventions and Trademarks), OSIM will ask us for a document from the Ministry of Public Administration, approving the use of that name by an entity, such as an LLC. Regarding "Academy," for example, we tried to register "Math Academy" for children’s educational services, specifically math preparation. But because the trademark was purely verbal without a distinctive graphical element, it was rejected. On the other hand, "Hospitality Academy" could be registered. Or "Styling Academy" could be registered. But if you try to register "Romanian Academy for European Studies," it’s clear that it won’t be approved as a trademark.
If I want to register "Prince Matei"…
Wines of Romania: Is trademarking a field where fraud frequently occurs? Should people hurry to register trademarks they need to protect? Let’s say we have a well-known wine on the market, like Prince Matei, and assume, hypothetically, that the trademark is not registered. If someone notices and wants to register it… Will the producer be notified that someone wants to use their name? Can the producer defend themselves?
Catalin Neagu: There are several issues here. If I’m using a name that isn’t as well-known as Prince Matei… Let’s say I use "Navarre" for a coffee shop and don’t register it. Time passes, and eventually, I’m notified by someone who owns the "Navarre" name for restaurants, coffee roasting, and related products. They tell me that it’s their name and that I can no longer use it. The problem for the notified party is that they left the trademark available to anyone, were passive, and didn’t register it, and are penalized because the law says the right belongs to whoever filed the application first.
The idea is to form a monopoly
Over time, every business owner must protect their products and services so that no one else can encroach upon them. A registered trademark gives you an exclusive right to exploit that name, creating a monopoly over that name.
To give an example from another field, pharmaceuticals – a company called Biofarm registered the trademark "Triferment." The registration dates back to 1961, and they’ve protected it ever since, renewing it every 10 years. In the meantime, they’ve registered other trademarks containing "ferment" and formed a family of trademarks with that word. If I try to register a trademark like "FermentPlus," I likely won’t get past them because an average consumer might think the trademark belongs to Biofarm, not to the competitor trying to register it.
Depends on notoriety
For well-known trademarks like "Prince Matei," which is recognized by a specialized audience, let’s say wine consumers, B2B wine distributors… If another company in the wine production industry wants to register "Prince Matei" on the grounds that the trademark hasn’t been registered – even if it’s not registered, if the owner can prove its market notoriety, that "Prince Matei" is produced at Crama DeMatei, that they sell 100,000 bottles a year, reaching 100,000 or 50,000 consumers, then they may be able to fight against the bad-faith registrant. If the trademark is less known, such a situation could happen.
Let me explain with an example: I use the trademark "La Castel" for restaurant and hotel services in Iași, and I don’t register it. Then, someone in Sibiu has the same idea and registers the "La Castel" trademark for a pizzeria. They succeed, and then they don’t want anyone else in the country to use that name, so they send everyone a notice to stop using it. At that moment, those notified have a problem – they have to give up the name.
Today, I received a call from a company named "Kiddo." They were notified by another company using "Kiddo" for amusement parks in Bucharest and now have to give up the name. Even though they’re based in Tulcea, the trademark wasn’t registered, and let’s say both companies advertise on Google. The bigger budget of the amusement parks will bring both companies up in search results. This creates additional problems because you might not provide the same services or at the same quality level. In short, problems arise when consumers might confuse trademark owners.
Is "Premiat" a trademark?
Wines of Romania: Is this the same kind of issue as when you try to register a widely used word? A few years ago, in the wine market, several producers were selling the "Premiat" (Awarded wine) brand. At one point, it was said that it couldn’t be registered, and some producers backed off and launched brands with more popular names, like "Eticheta Neagră."
Catalin Neagu: I looked into this when you brought it up. Around 2000, Murfatlar tried to register "Premiat" as a verbal trademark, but OSIM (the State Office for Inventions and Trademarks) refused. Later, Vinexport Trading, along with Cramele Halewood, filed the "Premiat" trademark in yellow writing on a black background and successfully registered it in 2001. Then came the "Premiat" with the "dove label", if you remember. Vinexport’s attempt was refused, possibly due to unpaid fees. Then Jidvei registered "Jidvei Premiat, collection of medal-winning wines, semi-dry Sauvignon Blanc," and so on, also registering other names. In 2020, "Premiat Domeniul Burcilor" was registered by Eug Prod SRL in Traian, Bacău county. This word (meaning "awarded") carries a laudatory component for a product, much like saying "excellent." "Premiat" means…
No misleading the public!
Wines of Romania: That it participated in a competition and won an award.
Catalin Neagu: That’s essentially a non-existent trademark, offering no protection. This is how we registered for a company in Iași, "Eticheta Curată Panivcom." Later, they realized that someone in the South, Manea Brutarul, who also makes bread, used "Eticheta Curată Manea Brutarul" on their labels. They asked me to notify them. Yes, I can, but they will laugh at us because once you make that declaration of non-invocation of exclusive rights to the "clean label" name, you essentially have nothing.
Stay tuned to Wines of Romania for the second part of the interview!
