Bad faith trademark registrations in Moldova can pose certain challenges for foreign companies in the country. Understanding the implications of bad faith trademark registrations in Moldova is crucial for businesses looking to protect their intellectual property.
What Is a Bad Faith Registration?
In Moldova, bad faith registration refers to the dishonest practice of registering a trademark that is identical or similar to an existing trademark that is either unregistered in Moldova or registered elsewhere. Moldovan law allows a trademark registered in bad faith to be annulled in court under specific conditions.
Why Bad Faith Registrations Are a Threat
This issue is particularly relevant for foreign manufacturers who distribute products in Moldova. Often, these companies do not have a physical presence in the country, so they rely on local distributors to promote and protect their brands. In some cases, manufacturers allow distributors to register trademarks in their own name, believing the local company will be better placed to prevent trademark infringements.
While this arrangement may work initially, problems can arise later. In our experience as legal advisors, we have seen cases where distributors who had registered the trademark refused to transfer ownership back to the manufacturer, forcing the manufacturer to abandon the brand or use a new one. In some cases, competitors or third parties might also register a manufacturer’s trademark in bad faith, particularly if the brand is not yet established in Moldova. This registration can be used to block market entry or to demand the manufacturer pay an extra price to transfer the trademark. The affected party then has the option to take the matter to court to protect its trademark against the bad faith registrant.
Criteria for a Bad Faith Registration Claim
Under Moldovan trademark law, bad faith registration is an absolute ground for the annulment of a trademark. To successfully challenge a bad faith registration in court, the following criteria must be met:
1. Knowledge or Reasonable Knowledge of Prior Use: The applicant must have known, or should have known, that the trademark was already being used in good faith in Moldova, or that the brand owner was promoting it there. The law uses both “knew” and “should have known” tests, meaning the plaintiff may only prove that the bad faith registrant was reasonably expected to know about the trademark’s use under normal business circumstances (e.g., media coverage or industry events).
2. Similarity of Goods or Services: The goods or services for which the bad faith trademark is registered must be identical or similar to those used or intended for use by the aggrieved brand owner in Moldova.
3. Prior Registration in a Paris Convention or WTO Member State: The trademark must be registered in another country that is part of the Paris Convention or a WTO treaty member, and it must be well-known in that jurisdiction. The law does not define what constitutes “well-known,” making it challenging for plaintiffs to prove this criterion without further legal clarity.
4. Risk of Confusion or Unfair Advantage: The bad faith registration must create a risk of confusion with the original trademark or suggest that the bad faith registrant intends to profit from the reputation of the original brand.
Two Categories of Trademarks Affected
Bad faith registrations in Moldova can thus affect two types of trademarks:
1. Unregistered Trademarks in Moldova: These are trademarks that are actively used in Moldova in good faith, even if not registered there. In these cases, only the first two criteria (knowledge of prior use and similarity of goods/services) need to be met.
2. Trademarks Registered in Other Countries: These are trademarks that are either promoted or negotiated for promotion in Moldova but not yet registered there. In these cases, all four criteria (knowledge of prior use, similarity, prior registration in a Paris Convention or WTO member state, and risk of confusion) must be met.
Legal Consequences of Annulment
If a trademark is annulled due to bad faith registration, the trademark will be deemed inexistent from the date of its registration.
Conclusion
For foreign businesses looking to enter or operate in Moldova, understanding the risks of bad faith trademark registrations is essential. It is important to stay vigilant and ensure that intellectual property rights are properly protected. Businesses should also be aware of the legal procedures to annul bad faith registrations and take proactive steps to safeguard their brands in the Moldovan market.
By Andrei Caciurenco, Partner, ACI Partners
This article was originally published in Issue 11.11 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.
