This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

Recently the Romanian Parliament approved an amendment to the trademark law which will come into effect in early 2010. It provides for some necessary changes which guarantee full compliance with EC trademark law.

Non-traditional trademarks recognised

While creative marketing departments never tire of developing new forms of trademarks in addition to traditional word marks and logos, legal systems often take a more conservative approach in protecting them. The new law explicitly recognises that non-traditional marks such as holograms, audio signals and combinations thereof may constitute a mark, provided they are capable of graphic representation. Previously this was uncertain and generated fierce discussions between right holders and their representatives on the one hand and the Romanian trademark office on the other.

Introduction of community exhaustion

In 1996 the parallel import of (genuine) glasses bearing the trademark "Silhouette" from Bulgaria to Austria constituted a trademark infringement1. Today, after the accession of Bulgaria and Romania to the EU, the importer can rely on the principle of community exhaustion allowing parallel imports of genuine branded goods within the European Economic Area. The new law expressly recognises this principle of community exhaustion and thereby helps clarifying the limits of trademark rights.

Relative grounds of refusal

One important aspect right holders should take in consideration is that a mark cannot be registered (or is liable to cancellation if it is already registered) if it is identical or similar to a prior registered mark for similar or identical goods and services, even if the validity of such mark expired not more than two years before the filing date.

In this respect, the new trademark law makes trademark searches even more important. Before filing a new trademark, it is highly recommended to conduct a thorough trademark search.

Opposition proceedings gaining importance

Currently the Romanian trademark office refuses the registration of trademarks ex officio in case of a conflict with identical or similar prior trademarks. Under the new regime trademark owners will have to carefully watch the publication of new trademark applications as they will have to invoke such relative grounds of refusal in opposition proceedings.

Therefore, opposition proceedings will become an important weapon of right holders in protecting their trademark rights. Once the deadline for opposition proceedings lapses, owners of prior rights have to watch their competitors' similar trademarks being registered and giving them full rights. After registration they only have the right to file a cancellation action, which is more costly and burdensome than opposition proceedings.

Term for non-use period clarified

The easiest way to cancel a competitor's trademark is to apply for cancellation based on non-use during the last five years. However, a successful application requires the right timing: An early application has to be rejected and gives the trademark owner the opportunity to start using his mark. The trademark law contains no express provisions on when the five-year period starts but the case law set forth that the clock should start running on the registration date of the mark2 (a date not defined by the trademark law). The proposal for the new trademark law helps avoid any misunderstandings by clarifying that the term begins on the day the trademark is recorded in the trademark registry.

Community Trademark Court

Finally, the new law provides that the Tribunalul Bucuresti will be Romania's Community Trademark Court of first instance having sole competence for litigation concerning Community trademarks.

While creative marketing departments never tire of developing new forms of trademarks in addition to traditional word marks and logos, legal systems often take a more conservative approach in protecting them.

This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

Footnotes

1 ECJ 16 July 1998, C-355/96 – Silhouette.

2 Decision no. 114A of 14.04.2007 ruled by the Bucharest Court of Appeal (this decision became irrevocable by non-filing the recourse)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.