OSIM decided that "eBagaje" merely described luggage sold online and provisionally refused the mark. We showed with evidence that the public has linked the name to a single retailer since 2011. When the office then rejected the application without having examined that evidence, we appealed pro bono, and the Trademark Appeals Board accepted the mark for registration in classes 18 and 35.
Context
On 29 July 2024 we filed application no. M 2024 07087 for the figurative mark "eBagaje" with the Romanian State Office for Inventions and Trademarks (OSIM), acting as representative. The applicant is MONDIAL-CAPRICE SRL of Brașov. Protection was sought for goods in class 18 (luggage, bags) and services in class 35 (retail), under the Nice Classification.
"eBagaje" has been active on the Romanian market since 2011. The applicant sells luggage and bags online under that name.
The legal problem
On 28 January 2025, OSIM issued a provisional refusal based on the absolute grounds in Article 5(1)(b) and (d) of Law no. 84/1998. In short, the examiner found that "eBagaje" lacked distinctive character and was descriptive: it only described the goods on offer (luggage sold online) and did not let the public identify a particular commercial source.
This is one of the most common obstacles in trademark registration. A name that sounds too close to the product it designates risks being treated as a generic term that any trader should be free to use.
Strategy
Distinctiveness acquired through use
The law offers a way out. Under Article 5(2) of Law no. 84/1998, a mark cannot be refused for lack of distinctive character if, before the filing date, it acquired distinctive character through use. Put simply, a name that starts out descriptive becomes protectable once the public, through long and intensive use, associates it with one company.
On 28 February 2025, within the legal deadline, we filed a detailed response to the refusal. It was backed by 15 annexes (62 pages) and a radio advertisement. Taken together, the evidence showed:
- Duration of use: more than 13 years of uninterrupted presence on the market, since 2011.
- Intensity of use: turnover figures, a strong online presence and documented monthly spending on advertising across several channels (Google Ads, Facebook Ads, radio).
- Geographic reach: nationwide activity, including 3rd place in the 2023 "Top Firme" ranking.
- Public perception: customer reviews, social media content and press articles (ziare.com, wall-street.ro, business24.ro and others) that consistently link "eBagaje" to the applicant's brand.
We also cited precedents: comparable marks already registered, such as "emag" at OSIM and "EBAGS" at the EUIPO.
An unexpected procedural flaw
On 25 March 2025, OSIM rejected the application. The decision said only that "the arguments presented were not such as to overcome the grounds for refusal", with no analysis of the evidence.
On 2 April 2025 we spoke by phone with the examiner and with staff at the registry. They confirmed verbally that, because of an internal error, the evidence attached to our response had never been added to the file and had not been examined before the decision. The rejection had been issued without our central argument ever being considered.
We asked the Head of the Trademark Department in writing to reconsider. OSIM replied that the department had no legal power to withdraw its own decision and that an appeal was the only remaining route. The same letter stated, contrary to what we had been told on the phone, that the decision had been issued "taking into account the documents on file".
The appeal, filed pro bono
The error lay in the administrative procedure, yet the cost of recovering the right was about to fall on the client. We didn't think a client should pay for an omission that wasn't theirs, so we prepared the appeal pro bono, charging no fee for this stage. For us it followed from how we work with clients: we do what it takes to protect their rights, even when the situation goes beyond the original mandate.
On 30 April 2025, under Article 97 of Law no. 84/1998, we filed the appeal with OSIM's Trademark Appeals Board. The official appeal fee, 746 lei at the time, was paid by the client. The appeal rested on two grounds:
- Procedural: the decision was unlawful, because the key evidence had not been examined and the application of Article 5(2) had effectively been left without reasoning.
- On the merits: the conditions of Article 5(2) were met, meaning the mark had acquired distinctive character through use, based on the full body of evidence.
We asked the Board to uphold the appeal, annul the rejection and accept the mark for registration.
Outcome
The Trademark Appeals Board decided the case on the documents on file. By Decision no. 91/2025, it upheld the appeal and ordered that the figurative mark "eBagaje" be accepted for registration for all goods and services in classes 18 and 35, applying Article 5(2) of Law no. 84/1998.
Lessons
- A mark that looks descriptive can still be registered if you can prove, with solid and well-organised evidence, that the public already links it to a particular company.
- Procedural rigour matters. Structured evidence, tracking every step of the file and reacting fast to a procedural flaw made the difference between a final rejection and a registered mark.
- Commitment to a client doesn't stop at the billable stages. Sometimes it means carrying the file forward without a fee.
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