Alina Tugearu, ZRVP

The dispute between Atelierele Pegas, the producer of the most known bike brand of Romania, and the German company ZEG Zweirad-Einkaufs-Genossenschaft eG, the owner of the Pegasus brand, was solved on April 22 in the court of first instance in the favor of the Romanian brand, represented by the dispute resolution team of the law firm Zamfirescu Racoți Vasile & Partners (ZRVP). The German company had requested in the Romanian court the annulment of the Pegas trademark.

On April 22, Bucharest Tribunal rejected the claim for annulment of the national trademark PEGAS and the forbidding of sale of the bikes under said name, an action brought by the German company ZEG Zweirad-Einkaufs-Genossenschaft, the producer of various brands of bikes, among which also Pegasus. ZEG had brought in front of the Romanian court of law a claim for annulment and counterfeiting against the legendary brand Pegas on the ground that the registration of the Pegas trademark in 2010 had allegedly been made in bad faith, and namely that the two trademarks, Pegas (România) and Pegasus (Germany) were similar and could not coexist on the market of the European Union.

“The case stirred up unusual attention, explainable by the notoriety of the Pegas bikes for the majority of the Romanians. The solution delivered by the court of first instance is so much more important as it proves that national specificity is a differentiation element with legal effects, which was something pointed out also by the Court of Justice of the European Union (CJEU) on several occasions. As regards the allowing of the exception of inadmissibility of the claim for counterfeiting in the absence of annulment of the Pegas trademark, the solution of Bucharest Tribunal represents a true case decision proving that national practice should not be reconsidered after the ruling of the CJEU of February 21, 2013, C – 561/11, as to the specificity of the national legislation applicable in the case as compared to the Community regulation of trademarks.”, declared Alina Tugearu, partner and coordinator of ZRVP’s intellectual property department.”

ZRVP’s defense concentrated on the bringing into the open of the non-legitimate strategy at the basis of the claim: ZEG tried unsuccessfully to avoid the effects of forfeiture of the 5-year term since the date of registration of the Pegas trademark for the filing of the claim for annulment. The court sanctioned this attempt to elude the law by rejection as inadmissible the counterfeiting claim count, in the absence of prior annulment of the trademark. The court also rejected the criticisms regarding the alleged bad faith when registering the Pegas trademark in 2010, grounded on the idea of fraudulent intention to profit from knowledge of the prior expired trademark (created by Uzina Mecanică Tohani). 

ZRVP’s attorneys at law proved that the intention that was at the basis of registration of the Pegas trademark was driven by good faith, its purpose being to reinvent and carry forward a trademark intimately relating to the Romanian people’s history, which otherwise would have perished from its collective memory. As regards the risk of confusion, the market survey submitted to the case file proves, beyond any doubt, the extensive knowledge the Pegas brand enjoys in the territory of Romania, versus the Pegasus brand – unknown to the Romanian public, which allows the coexistence of the two trademarks in Romania.

ZEG’s action in court started from a final decision of the European Union Intellectual Property Office (EUIPO) from 2017, establishing that the two trademarks, Pegasus (Germany, from 1984) and Pegas (România), were similar and could not coexist on the EU market, because confusion could be caused to the clients.