by ACI Partners

News21 May 20150 comments

ACI representing a client in “bad faith TM” case

ACI Partners Law Office represents one of the leading EU food product manufacturers in a dispute over a trademark registered by a competitor in Moldova in order to block the entry of our client into Moldovan market.

Moldovan Trademark Law provides for a territoriality principle in protecting trademarks, meaning that rights of the trademark owner are confined to the country in which its mark was applied for and registered. Therefore, in order to have protection in Moldova one needs to register its trademark with the competent authority in Moldova.

However, one could fairly note that Moldovan law provides for an important exception to the territoriality principle thus allowing trademark owners to benefit of the effective protection against such unauthorized registrations as bad faith registration of a trademark.

What is a bad faith registration?

Moldovan Trademark Law is in line with other European jurisdictions. The trademark shall be deemed as registered with bad faith, if at the moment of submitting of the trademark application the applicant knew or could have known of the existence in Moldova or abroad of such a trademark, which is known in the country of its origin, and which is being promoted for the territory of the Republic of Moldova or the promotion of which is being negotiated.

If it is proved in court that the applicant of a blocking trademark has acted in bad faith at the moment of submission of the trademark application for registration at the competent authority (State Agency for Intellectual Property – AGEPI) such trademark registration shall be deemed invalid by a court.

Upon invalidation of a bad faith trademark the court shall take into account, in particular, whether the registered trademark is being used for the goods which conflict with the other trademark, or the owner of a bad faith trademark is using it solely for the blocking purposes.

Thus, in order to claim bad faith registration, the aggrieved party shall prove the following:

• the aggrieved trademark needs to be registered.
• registration may be abroad or in Moldova.
• the applicant for a bad faith trademark had knowledge of the aggrieved trademark at the moment of application.
• the aggrieved trademark needs to be known in the country of origin (it is not equivalent to well-known trademarks protected under 6-bis).
• the aggrieved trademark should be promoted in Moldova or such promotion is negotiated at the moment of application.
• registration of the trademark should be made with fraudulent intention.

These conditions shall be met cumulatively and the aggrieved party would have to prove existence of each and every condition listed above.

ACI Partners Law Office advises on a variety of matters related to trademarks and other intellectual property issues. For additional information, our IP credentials and effective legal assistance on your IP business matters in Moldova, please contact our IP & IT Service Line, contact person: Andrei Caciurenco, LL.M., Certified IP Counsellor, Partner.