Victory Against Romanian Trademark Owners
As is well known, SCIO biofeedback devices first appeared on the European market in 2002-2003, achieving great success. The distribution rights and European CE certification as medical devices were held by Maitreya Kft.
One of the distributors was the Romanian company S.C. SCIO International s.r.l., and its director, Mr. Sirbu, had previously been employed by Eclosion Kft., gaining first-hand information about the business. Around 2010, due to Mr. Nelson’s activities in the film industry, Maitreya Kft. faced financial difficulties, forcing Mr. Nelson to sell the company to a new investor and resign from his CEO position. During this period, Mr. Tokics, aware of the business potential of SCIO devices, founded Mandelay Kft. and recruited most of the employees involved in Maitreya Kft.’s biofeedback business. He also reached an agreement with the new management and owners to transfer all biofeedback business rights to Mandelay Kft., including the registration of the medical device and the application software. The transition went smoothly, and Mandelay Kft. continued the business as if nothing had happened.
Mr. Sirbu’s Romanian company learned about these events and, seeing Maitreya Kft.’s difficulties, registered the European trademarks in their own name: SC SCIO International in a special emblem, the application software name SCIO CLASP 32, as well as a combination of the old and new product names: SCIO EDUCTOR, where EDUCTOR represented the then-upgraded version of the SCIO devices.
As the successor, Mandelay Kft. also filed a European trademark application for the SCIO name at the end of 2011, a few months after the Romanian company’s filing.
After 2011, S.C. SCIO International continued to do business with SCIO devices and created a counterfeit version, using their existing trademark rights.
This was the reason Mandelay could file requests for the cancellation of the Romanian company’s previous trademark rights, and after a lengthy process, final decisions were made by the EUIPO Board of Appeal, declaring all three contested trademarks of S.C. SCIO International null and void retroactively to the date of filing. This means that these trademarks are to be considered as if they never existed. The basis of the decision was the same: these applications were filed in bad faith, as at the time of filing, the applicant should have known that the rights to use the SCIO and EDUCTOR names belonged to Mandelay Kft., the cancellation applicant.
The Romanian company also filed several other trademarks after Mandelay Kft.’s initial SCIO and EDUCTOR trademark filings, but Mandelay initiated the appropriate opposition procedures against them, which are still ongoing. QX World Kft. has initiated various invalidation proceedings against Mandelay Kft.’s fundamental trademarks, which have been rejected twice by the EUIPO Board of Appeal. However, due to an appeal before the General Court of the European Union, these proceedings have not yet concluded. Part II of this report will be prepared after the General Court of the European Union’s decision, which will bring an end to this lengthy bilateral trademark dispute resolution process.
It is important to note that the official trademark and medical certification ownership of the SCIO and EDUCTOR devices is currently held by Mandelay Kft. This means that users who do not obtain these devices from Mandelay Kft. can easily fall victim to deception, as counterfeit devices flooding the market are not equipped with the original trademark and certification. Mandelay Kft. is the exclusive holder of the authentic certification and origin of SCIO and EDUCTOR devices distributed in Europe.
05.08.2024
Mandelay Kft.
You can view the decision documents here: