Trademark procedures and strategies: Romania
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There is no requirement to use a mark in order to acquire trademark rights. The Romanian trademark system is based on the first-to-file principle and registration is possible without preliminary use. If a trademark is refused registration for lack of distinctive character, this can be overcome by showing that the mark has acquired distinctive character through use prior to its application date.
Legal framework
National
Trademarks in Romania are governed by the following laws and regulations:
- the Law on Trademarks and Geographical Indications (84/1998), as republished and further modified and amended;
- Government Decision 1134/2010 on the Regulations for the Application of the Trademarks Law;
- the Border Measures Law (344/2005);
- Government Decision 88/2006 on the Regulations for the Application of the Border Measures Law;
- Emergency Governmental Ordinance 100/2005 on the Protection of Industrial Property Rights (as further modified and amended);
- the Unfair Competition Law (11/1991, as further modified and amended);
- the Competition Law (21/1996, as further modified and amended), as republished;
- the Advertising Law (148/2000, as further modified and amended); and
- the Misleading and Comparative Advertising Law (158/2008), as republished.
The applicable statutory law and principles are set out in the Civil and Criminal Codes and the Civil and Criminal Procedure Codes.
International
Romania is a party to the following international trademark treaties:
- the Paris Convention for the Protection of Industrial Property;
- the World Intellectual Property Organisation Convention;
- the Madrid Agreement on the International Registration of Marks;
- the Madrid Protocol;
- the Nice Agreement on the International Classification of Goods and Services;
- the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks; and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).
In addition, Romania joined the European Union on January 1 2007, meaning that EU trademark and border measures legislation also applies.
Unregistered marks
There is no requirement to use a mark in order to acquire trademark rights. The Romanian trademark system is based on the first-to-file principle and registration is possible without preliminary use. If a trademark is refused registration for lack of distinctive character, this can be overcome by showing that the mark has acquired distinctive character through use prior to its application date.
While use is not a condition for obtaining trademark rights, after a grace period of five years use is required to maintain the trademark registration, enforce such rights in administrative opposition procedures and establish infringement.
The protection afforded to unregistered marks is thus limited to:
- signs covered by other IP rights; and
- well-known trademarks.
In order for a trademark to be considered well known, it must be widely known in Romania among the relevant segment of consumers of the goods or services to which the trademark is applied.
Registered marks
Ownership
The Trademarks Law imposes no special requirements on the applicant or trademark owner.
Representation
If a representative is named, an original, signed power of attorney must be filed. It does not require notarisation or legalisation.
Scope of protection
Protected: A ‘trademark’ is defined as “any sign that is susceptible to graphical representation capable of distinguishing the goods or services of an undertaking from those of other undertakings”.
Not protected: The following, among others, are excluded from trademark protection under the national law:
- marks that cannot qualify as trademarks within the sense mentioned above;
- marks lacking distinctive character;
- marks consisting exclusively of signs or indications that have become customary in the current language or bona fide established practices of the trade;
- marks consisting exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or offering of the services, or other characteristics thereof;
- marks consisting exclusively of the shape of the goods imposed by the nature of the goods themselves or necessary to obtain a technical result or which gives substantial value to the goods;
- marks liable to mislead the public as to the geographical origin, quality or nature of the goods or services;
- marks containing or consisting of a geographical indication for goods that do not originate in the designated territory, if the use of this indication is liable to mislead the public as to the true place of origin;
- marks containing or consisting of a geographical indication identifying wines or spirits that do not originate from the place indicated;
- marks containing, without the owner’s consent, the image or surname of a well-known person in Romania; and
- marks containing, without the consent of competent authorities, reproductions or imitations of armorial bearings, flags, state emblems, signs, official hallmarks of control and warranty and coats of arms belonging to countries of the Paris Union and which are governed by Article 6ter of the Paris Convention.
Some of the absolute grounds for refusal above can be overcome if the mark has acquired distinctive character through use prior to the application date.
In addition to the absolute grounds listed above, registration will be refused on relative grounds if, among other things, the mark for which registration is sought:
- is identical to an earlier trademark for identical goods or services;
- is identical or similar to an earlier trademark for identical or similar goods or services, where there is a likelihood of confusion, including the likelihood of association with the earlier trademark;
- is identical or similar to an earlier EU trademark for goods or services that are not similar to those in relation to which the earlier EU trademark is registered, where the earlier EU trademark enjoys a reputation in the European Union and the use of the subsequent trademark would generate an unjustified profit deriving from either the distinctive character or reputation of the earlier EU trademark;
- is identical or similar to an earlier trademark registered in Romania and is meant to be registered or is already registered for goods and services that are not similar to those for which the earlier trademark was registered, where the earlier trademark enjoys a reputation in Romania and the use of the subsequent trademark would generate an unjustified profit deriving from either the distinctive character or reputation of the earlier trademark;
- conflicts with a third party’s earlier rights in an unregistered trademark or another sign used in commerce or, as the case may be, invokes a priority date subsequent to the rights over the unregistered trademark or sign, where such earlier rights grant to their holder the right to forbid the use of the subsequent trademark;
- is identical or similar to an earlier registered trademark for identical or similar goods or services, granting a right that expired for non-renewal within the two years prior to the filing date, if the holder of the earlier trademark either did not agree to the registration of the subsequent trademark or used its trademark; or
- may be confused with a trademark used abroad at the filing date and which continues to be used there, if the application was made in bad faith by the applicant.
Procedures
Examination
To apply for trademark protection, an online or paper application must be filed with the State Office for Inventions and Trademarks (SOIT). SOIT will first perform the formal examination of the application and then assign a deposit number and date to the application.
Provided that the application is accompanied by the official publication fee, it will be published in an e-bulletin within seven days of the filing date. In principle, SOIT further carries out a substantive examination of the trademark application within six months of its publication in the e-bulletin, as long as the examination fees have been paid.
Opposition/observations
Interested persons may file oppositions on relative grounds or observations on absolute grounds against a trademark application within a two-month period following its publication in the e-bulletin.
Oppositions are notified to the applicants, which can file a response in defence within 30 days of the communication date.
The opposition case is examined by a SOIT committee, which will issue a notice of acceptance or refusal that is binding to the substantive examination of the application. When observations are filed and considered pertinent by SOIT, a provisional refusal notice is issued inviting the applicant to file its response within three months of the communication date.
Following the substantive examination, SOIT will issue a decision of acceptance or refusal of the trademark application.
Searches
SOIT offers several trademark searches as a paid service to interested parties, in addition to the trademark database which is publicly accessible on the authority’s website (http://api.osim.ro:18080/marci/index.jsp).
Contestation
SOIT’s decisions may be contested by any interested party within 30 days of their communication or publication, as the case may be, before SOIT’s Appeals Committee. Decisions rendered by the Appeals Committee may be further contested before the Bucharest Court of Law.
Registration
SOIT will record the trademark in the National Register and publish it in Part II of the Official Bulletin after the payment of the final registration fees. Provided that no appeals are filed within 30 days of the second publication date, SOIT will issue the registration certificate.
A registered trademark is valid for 10 years from its application date and may be renewed indefinitely for consecutive 10-year periods.
Removal from the register
Surrender: A trademark owner may surrender the rights with respect to some or all of the goods or services for which the trademark is registered.
If a licence has been registered, the surrender will be recorded in the National Register only if the owner proves that it has notified the licensee of its intention to surrender the trademark.
Revocation: Anyone with a legitimate interest may request the court to deprive a trademark owner of its rights if, without legitimate reason, the mark was not effectively used in Romania within an uninterrupted period of five years as from its registration in the National Trademarks Register, or if such use was suspended for an uninterrupted period of five years. However, the burden of proof remains with the trademark owner.
Revocation of a registered trademark may also be requested before a court of law if:
- as a result of the rights holder’s actions or inactivity, the trademark has become customary in the trade of the goods or services for which it is registered;
- as a result of its use by the rights holder or with its consent, the mark has become liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services for which it is registered; or
- the trademark was registered by someone who did not have the legal capacity to do so.
Invalidation: Generally, any interested party may file a legal action with the Bucharest Court seeking cancellation of a trademark registration on any of the following grounds:
- There were absolute grounds for refusal at the time of registration.
- There were relative grounds for refusal at the time of registration.
- The registration was applied for in bad faith.
- The registration infringes the image or name rights of a person.
- The registration infringes earlier rights acquired in a protected geographical indication or a protected design or model, or other IP rights or copyright.
The time limit for a legal action seeking cancellation of a trademark registration is five years from the date of registration, except where the registration was applied for in bad faith, in which case an action may be brought at any time during the term of protection.
Enforcement
Complexity
Trademark rights are enforced under the Trademarks Law and secondary legislation on unfair competition, advertising and border measures. In addition, certain acts are regulated by the statutory acts and not by the specialised legislation. It follows that both the legal grounds for enforcement and the remedies available to rights holders are complex and must be carefully considered on a case-by-case basis. The only distinction between registered and unregistered rights, in terms of complexity, is that the burden of proof may be heavier in the case of unregistered rights and the case may thus take longer to progress.
Generally, the Trademarks Law provides trademark owners with both civil and criminal remedies.
In the case of unauthorised use of a registered trademark, the owner may request the competent judicial authority to prohibit third parties from engaging in any act that constitutes an infringement of its rights under the Trademarks Law. Further, the law defines as a criminal offence any act of placing into circulation a product bearing a mark identical or similar to a registered trademark for identical goods or services, as well as placing into circulation goods affixed with geographical indications indicating or suggesting that the goods originate from a geographical area other than the real place of origin.
Apart from the civil action, the owner of a registered trademark may also file a criminal claim against the infringer, who may be subject to imprisonment for up to two years or a criminal fine. Where a civil action is incorporated in the criminal complaint proceedings, the infringer may also be liable to pay damages.
In accordance with the Unfair Competition Law, anyone who contravenes honest commercial practices and the good-faith principle may be enjoined by the court to desist or refrain from the acts in question. The Unfair Competition Law further qualifies as a criminal offence the use of a “firm logo or of a packaging which is liable to create confusion with those legitimately used by another merchant… [and] the manufacturing in any manner, import, export, warehousing, offering for sale or sale of merchandise or services bearing false mentions regarding... trademarks [or] geographical indications... in order to mislead other merchants and customers”.
Under both the Trademarks Law and the Unfair Competition Law, as well as under the Civil Procedure Code, a rights holder has the right to request the court to order a preliminary injunction. The rights holder may thus request a preliminary injunction that would temporarily prohibit the infringer from marketing goods or services bearing the infringing signs, or from other acts or omissions that may further prejudice the rights holder’s rights.
A preliminary injunction may be issued without hearing the other party. However, this is not a common practice.
Finally, the Border Measures Law provides that a rights holder may request Romanian Customs to suspend customs operations and seize goods that are suspected of infringing its rights based on an accepted application for customs action.
Timeframe
The duration of civil court proceedings for the enforcement of trademark rights varies, depending on the complexity of the case and the behaviour of the alleged infringer. In practice, if all possibilities of appeal are exhausted, it may take around two years to obtain a final and binding decision.
In practice, the duration of a criminal action is usually extended in view of the time necessary to complete the police investigation and for the Prosecutor’s Office to examine the case.
Ownership changes and rights transfers
As a general rule, the Trademarks Law provides that rights in a trademark may be transferred by assignment or licence at any time during the term of protection; such rights may be assigned independently of the business in which the trademark is incorporated.
An assignment must be executed in writing and signed by the parties to the assignment, under threat of nullity. The assignment may be executed for all or only some of the goods or services for which the trademark is registered. However, unlike a licence, an assignment may not limit the use of the trademark to a given territory. The Trademarks Law also includes a specific clause on the assignment of identical or similar trademarks: identical or similar trademarks that have the same registered owner and are used for identical or similar goods or services may be assigned only as a whole and to one person, under threat of nullity of the assignment deed.
According to the Trademarks Law, an assignment must be published in the Official Bulletin in order to become opposable to third parties.
Publication of the assignment or licence and its recordal in the National Register do not affect the existence of the assignment or licence agreement per se, but rather afford the new trademark owner or licensee the opportunity to publicise the agreement’s existence.
SOIT may refuse to record a trademark assignment if it obviously misleads the public as to the nature, quality or geographical origin of the products or services for which the trademark has been registered, except where the beneficiary of the assignment agrees to limit the trademark assignment to the products and services for which the trademark is not misleading.
In practice, it takes between two and four months to record a licence or assignment.
Related rights
The main areas of overlap between trademarks and other IP rights concern copyright and designs. In this respect, the holder of an earlier right in a protected design or copyright may file an opposition or appeal against a trademark application or a cancellation action against a registered trademark.
Generally, Romanian IP legislation recognises artistic and intellectual creations for dual protection. The Copyright Law 8/1998 protects literary, scientific and artistic creations, regardless of the mode or form of expression. No formal requirements apply; intellectual creations are recognised and protected under the Copyright Law through the mere fact of their creation, if they are original.
The Designs and Models Law 129/1992, republished with amendments, protects the creative act of designing the formal or ornamental appearance of a product that satisfies aesthetic requirements. Design protection is granted through registration for a maximum duration of 25 years and does not exclude protection through a trademark registration.
Online issues
There are no specific legal provisions governing the unauthorised use of registered or unregistered trademarks in domain names, metatags, links and frames. The unauthorised online use of trademarks has not yet been mentioned as a specific crime.
In addition, any person or entity wishing to register a ‘.ro’ domain name must consent to the Internet Corporation for Assigned Names and Numbers’ rules and policy, which provide, among other things, that disputes over domain names may be decided by arbitration panellists.
Nestor Nestor Diculescu Kingston Petersen
201 Barbu Vacarescu Street
Globalworth Tower
18th Floor, District 2
Bucharest 020276
Romania
Tel +40 21 201 12 00
Fax +40 21 201 12 10
Web www.nndkp.ro
