06.10.2022

STOICA & ASOCIAȚII wins the AQUA Carpatica trademark litigation

After a legal battle spanning over 7 years, carried out in two procedural cycles, both internally and before the European courts, the owners of the trademarks depicting the AQUA Carpatica bottles (Valvis Holding and Carpathian Springs) can enjoy the legal recognition of their registration.

The Romanian High Court of Cassation and Justice (HCCJ) issued today the final judgment, rejecting the trademark annulment action filed by an alleged competitor. The team of lawyers from STOICA & ASOCIAȚII, coordinated by Valeriu Stoica (Founding Partner), consisted of Dragoș Bogdan (Senior Partner) and Mihai Stănescu (Managing Associate).

STOICA & ASOCIAȚII’s lawyers took over this case after it had been already settled by the first court, which upheld the action and annulled the trademarks. At that time, the clients were faced with the obligation to pull the product’s packaging out of the market, after years of marketing efforts. In the appeal stages from the first procedural cycle, after thoroughly applying the latest jurisprudence of the Court of Justice of the European Union (CJEU), the Bucharest Court of Appeal (BCA) and the HCCJ stated out - through a decision which is of particular importance for the subject matter even at a European level - that there was no copyright on the shape of the bottle of the alleged competitor, due to the fact that it was lacking the originality elements necessary for the existence of legal protection.

In the second procedural cycle, concluded today by the decision of the HCCJ, it was concluded that there was no likelihood of confusion between the previous European trademark of the alleged competitor and the subsequent AQUA Carpatica.  national trademarks. The complexity of the whole case was particularly high. The decisive arguments that tilted the balance were based on skillful interpretations of the criteria established in the jurisprudence of the European courts for assessing the risk of confusion between three-dimensional trademarks. Both the BCA and the HCCJ consistently applied the jurisprudence of the CJEU, thus consolidating the constant and high intellectual collaboration between the Romanian courts and the most important European court in the matter of intellectual property.

Dragoș Bogdan: "The litigation also had an important European component. At the European level, the litigation was conducted on four levels of jurisdiction: two phases at the level of the European Union Intellectual Property Office, then on appeal before the General Court of the European Union, and finally, before the Court of Justice. Our written arguments were complemented by oral pleadings and specific discussions, which I had with the judges in the open session before the General Court of the European Union where I had the honor and pleasure to defend the interests of my clients. In all four phases, both the European Union Intellectual Property Office and both European Union courts decided that there was no likelihood of confusion, and the customers' European trademarks, identical to those that were the subject of the domestic dispute, were admitted for registration for the entire territory of the European Union.”

The final solutions from these files will remain a reference point in the field of three-dimensional brands consisting of beverage packaging, not only in Romania, but also in the European Union, and at the same time will be an important working tool for practitioners in terms of the elements that can be the object of trademark and copyright protection for such objects.