On 2 August 2011 the State Agency of Intellectual Property of the Republic of Moldova (AGEPI) – Moldovan Trademarks Office issued the first registration certificate of a na-tional soundmark for Moldova. This concludes a successful application for a Moldovan trademark, finally clarifies the issue of whether soundmarks are subject to registration under Moldovan legislation, and begins a new practice for AGEPI. Although back in 2003 three international soundmarks were designated for Moldova under the Madrid arrangements, until now the question was open on whether a national soundmark can be registered directly locally.
Under Moldovan Act No 38/2008 (Trademark Act), a trademark can be any sign capable of being represented graphically and that distinguishes the goods or services of a legal entity or natural person from those of other legal entities or natural persons.
A trademark may therefore be signs that can be represented graphically, such as words (including names); letters; numerals; designs; combinations of colours; pictorial elements; three-dimensional shapes, in particular the shape of goods or of their packaging; as well as any combination of these signs, provided they are distinctive.
Domain names containing the ccTLD ".MD" can also be registered as trademarks in Moldova.
Although the wording from the Moldovan legislation defining the signs that can constitute a trademark has been harmonised with EU trademark law, until this latest event the question was open on whether soundmarks (and other untraditional marks, such as scents, tactile, and gustative signs), not being defined at all, can be registered as a national trademark in Moldova.
When taking the first decision on registration of the national soundmark, AGEPI considered such factors as the soundmark’s capability of being represented graphically (eg, by music notes, audiogram, described in words, or presented as a phonogram) and whether the applicant presented sufficient elements to distinguish its goods or services from those of other persons.
The other untraditional marks (scents, etc.) cannot be represented graphically and, hence, most likely cannot be registered as trademarks in Moldova.
Who can own a trademark?
Under the Trademark Act, any natural person or legal entity, including foreigners, or groups of natural persons and/or legal entities jointly, including foreign or mixed, can be the owners of a trademark. Ownership is confirmed by a trademark registration certificate issued by AGEPI.
Ownership in a trademark can be acquired either individually or jointly (by way of indivisible property). If owned jointly, the mechanism of use is to be regulated by an agreement between the co-owners.
Rights over a trademark can be assigned anytime during the validity of trademark. An assignment can be performed either in respect of all or certain goods or services for which the trademark is registered.
Ownership in a trademark can be transferred from a natural person to another person or entity, including by way of (legal or testamentary) inheritance.
Foreign persons can acquire trademarks under the same terms as Moldovan citizens or persons residing in Moldova. Persons residing/operating in Moldova can act on their own before AGEPI, while foreigners may only be represented by representatives authorised by AGEPI.
Things to know
Registration of a company name with the Moldovan trade register does not bar a third party from registering a similar name/text as a trademark, if done in good faith by the third party and if no such trademark exists or is protected in Moldova. The local court practice already knows cases where, following the incorporation of a company by one person, another person registered the same name as a trademark. The court, finding no bad faith, refused to annul the trademark.
Further, stepping into commercial negotiations with third parties on the sale in Moldova of products under a trademark not protected in Moldova may bring bad faith registration of such trademark by third parties. Such unpleasant situations usually result in lengthy court proceedings and significant costs. Trademark owner should therefore take care.