Romania: Trademarks

The purpose of the first part is to set the legal framework, the second part provides short answers to frequently asked questions about trademarks, whereas the third provides more detailed information on recurrent topics such as the PTO Procedure, or transfer of rights.

1. The new Romanian Trademark Law No. 84 was approved by the Parliament and promulgated on 15 April 1998. The Law has entered into force on July 23, 1998. The Law concerns the registration of trademarks, service marks, collective marks as well as certification marks and indications of geographical origin.

1. Paris Convention for the protection of Industrial Property

Romania is a State party to Paris Convention since October 6, 1920.

2. Madrid Agreement concerning the International Registration of Marks

Romania adhered on 28 December 1968.

3. Nice Agreement Concerning International Classification of Goods and Services, effective June 30, 1998

4. Vienna Agreement Establishing an International Classification of the Figurative Elements of the Marks effective June 30, 1998

5. The Trademark Law Treaty (TLT) effective July 28, 1998

A trademark means any sign that serves to distinguish the goods or services of one undertaking from those of other undertaking and is capable of being represented graphically. This new definition permits a wider range of trademarks to be registered including words, including personal names, designs, letters, numerals, three-dimensional configurations, including the shape of goods or their wrapping as well as others packaging, including colors and combination of colors. However, certain shapes will remain unregistrable, for example shapes that result from the nature of the goods themselves.

Collective trademarks are registrable. These are signs for distinguishing the goods and services provided by members of an association from the goods and services of others' businesses.

Certificate Marks is a new development. The use of certification marks will be governed by Trademarks Offices approved rules. The Office will certify certain common properties of those entitled to use the mark, except for the registered owner and its affiliates. The properties are to be controlled by the registered owner. The difference between certification marks and a collective mark is that the collective mark is only registrable for associations and does not imply any certification-it represents only a common distinctive sign.

Indications of Geographical Origin are registrable.

The rights afforded by registration of a trademark are attributive of rights (i.e.,the right is created by virtue of registration).

The acquisition of the trademark protection confers to the proprietor of the trademark exclusive rights therein.

Third parties shall be prohibited from using in the course of trade, without the consent of the proprietor of the trademark:

a) any sign which is identical with the trademark in relation to goods or services which are identical with those for which the trademark is protected.

b) any sign where, because of its identity with, or similarly to, the trademark and the identity or similarity of the goods or services covered by the trademark and the sign, there exists a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trademark;

c) any sign which is identical with or similar to the trademark in German a translation in of any these languages will be required;

The applicant of a trademark may prohibit third parties from using his trademark provided that the trademark has been advertised in the Official Journal of the Romanian Patent and Trademark Office.

Any person who undertakes such infringing actions may be sued by the proprietor of the advertised trademark, pursuant the Civil Law. The undertaking by third parties of any infringing action without the consent of the proprietor of the trademark constitutes counterfeiting and may be punished. The Decision of the Court regarding compensation for damages is effective only after the trademark is registered.

In proceedings in the Court for infringement of a Trademark the plaintiff may request the Court to order a provisional injunction on infringing activities and the provisional seizure or withdrawal from the market of the goods concerned. Exceptionally, the provisional injunctions may be requested before the proceedings have been scheduled. An appeal entered against a decision to order provisional injunctions has not suspensive effect.

The new Trademark Law No. 84/1998 is drafted to current economical needs and largely ties in with Europe's Trademark Harmonization Directive. Many important changes are brought by the new Trademark Law. Some of the major aspects are briefly highlighted.

a) Formal requirements

b) Examination procedure: grounds for refusing trademark registration

2. PROTECTION OF WELL-KNOWN MARKS

3. OPPOSITION, CANCELLATION

a) Cancellation of marks

b) Restoration of marks

c) Opposition procedure

4. TRANSFER OF RIGHTS: ASSIGNMENTS, LICENSES

a) assignments

b) licenses

a) Formal requirements

The right to trademark belongs to the first legal or natural person who legally filed a trademark application.

The application which contains information identifying the applicant, a device of the trademark and a list of goods or services in respect of which the registration is requested may be filed with the PTO. The application shall refer to only one trademark. The application is written in Romanian language.

The date of filing shall be regarded the date on which the documents containing the information above settled are received at the PTO or at the Paris Convention priority date.

If the applicant for the trademark has displayed goods or services at an official or officially recognized international exhibition falling within the terms of the Paris Convention or at another exhibition in Romania, he may, if he files the application within a period of six months from the date of first display of the goods or services under the trademark applied for, claim a right of priority from the date of first display.

The filing of a trademark may be requested by an individual or a legal person. The applicants may be represented by an authorized attorney, having his domicile or his business place in Romania. The representative has to file within three months the Power of Attorney. Where the Power of Attorney is not provided in due time, the application shall be forfeited.

The applicant of a trademark application containing several goods or services, may request the PTO, the division of the initial application into two or more applications.

The seniority of the original application continues to apply to each part of a divided application.

The applicant may request the division of the initial application, either during the examination proceeding until the decision of granting, or during the appeal proceedings.

b) Examination procedure: grounds for refusing trademark registration.

Applications are examined for inherent registrability and for prior conflicting marks.

The following shall not be registered (inherent registrability requirement):

a) trademarks which are devoid of any distinctive character with respect to the goods or services;

b) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of the rendering of services, or to designate other characteristics of the goods or services;

c) trademarks which consist exclusively of signs or indications which have been customary in the current language or in the bona fide and established practices of the trade for designating goods or services.

d) trademarks which are of such nature as to deceive the public, in particular, as to the nature, quality or geographical origin of the goods and services;

e) trademarks which are contrary to the public policy or to accepted principles of morality;

f) trademarks which include armorial bearings, flags or other emblems of State, or armorial bearings of a locality, an association of communities or an association of other communal entities within the country;

g) trademarks which include official signs and hallmarks, indicating control and warranty, which, according to a notice published in the Official Gazette, cannot be validly registered as trademarks.

h) trademarks which include armorial bearings, flags or other signs, seals, or designations, or international intergovernmental organizations which, according to a notice published in the Official Gazette, can not be validly registered as trademarks; or

I) trademarks the use of which can obviously be prohibited pursuant to other provisions in the public interest.

As in the EU Harmonization Directive, a trademark cannot be validly registered if it is identical with or similar to earlier Trademark for identical or similar goods or services in as much as a risk of confusion may arise on the part of the public, which includes the risk of association with the earlier Trademark (prior rights rights requirement).

Also the refusal of the registration of a Trademark may be based on the ground of the prior rights acquired as regard to trade name, company symbol, geographical origin as well as on an earlier trademark well -known in Romania within the meaning of Article 6 bis of the Paris Convention, even for different goods or services.

Well-known trademark enjoys special protection. This means conflicting use of similar trademarks may be attacked although no application or registration of the well-known mark exists, provided relevant proof is available.

a) Cancellation

Cancellation is possible. Any interested person can request the cancellation of a registered

Trademark at any time during the validity period, if the registration was made dishonesty or the trademark has not been fulfilled the registration conditions or for non use of registered Trade Mark.

b) Restoration

Restoration is possible, based of not observed legal terms by justified reasons. The restoration request may be filed no later than one year from the expiring of non observed legal term.

c) Opposition procedure

The request of opposition on the legal ground of refusal may be filed within a period of three months following the publication date of the registration of the trademark. The opposition may be filed by the proprietor of an earlier Trademark, or of a well known trademark, as well as a proprietor of an earlier right including his surname, pseudonym or likeness, a geographical indication protected, a industrial design or model, a copyright, may file a request of opposition on the legal ground of refusal.

The right conferred by the registered trademark may be subject of an assignment or a license, anytime within the period of protection.

a) Assignment of the marks

The rights on registered trademark may be assigned, separately from any transfer of undertaking. The assignment shall be carried out in writing, signed by contracting parties. In the contrary, the assignment can be deemed to be null. The transfer of trademark rights by assignment may be for all goods or services registered or only a part thereof; the assignment granted, even partially, shall not be territorially limited.

Where the transfer related to a business establishment, the transfer shall include the rights accruing from the registration of the trademark. In the contrary, the trademark rights can be deemed to forfeited. The identical or similar trademarks, used for the identical or similar goods or services owned by the same proprietor shall be transferred by full assignment to only one assignee. In the contrary, the transfer of the rights can be deemed to be null.

On request of one of the parties the transfer of the rights conferred by the registration of the trademark may be recorded in the Register, if proof thereof is furnished and the due fees are paid to the Patent Office. The assignment is effective from the date of recordal thereof in the Register.

b) License of the marks

The proprietor of a trademark may grant an exclusive or nonexclusive license for some or all of the goods or services for which the trademark is protected and for the whole or part of Romania. The proprietor of a trademark may invoke the rights conferred by that trademark against the licensee who fails any provision in his licensing contract with regard to the duration of the license, the form covered by the registration and the kind of goods or services for which the license has been granted, the territory in which the trademark may be affixed, the quality of the goods manufactured or the services provided by the licensee.

The licenses must be recorded with the Patent Office and a fee as prescribed by the schedule of fees must be paid with the request of recordal. The license becomes effective from the date of the recordal in the Register.

The licensee may bring an action for infringement of a trademark only if the proprietor of the trademark consents thereto.

Any licensee may, for the purpose of obtaining compensation for damage suffered by him, be entitled to bring an action in the Court, if the proprietor of the trademark has been aware of the damage and has not brought the action in the Court in due course.Where the proprietor of the trademark has brought a counterfeiting action in the Court, any licensee may be entitled to intervene in order to claim the damages.

NOTE 1: This article provides general information about this subject matter. Please remember that no attorney-client relationship is reached between CABINET M. OPROIU and the user of this information, until an initial consultation.

NOTE 2:The content of this article relies on a more comprehensive article on Romanian Trademarks Law that shall soon be published in an issue of the "Digest of the Intellectual Property Laws of the World by Lester Nelson, Esq." released by Oceana Publication, Inc. The author of the article is Mrs. Margareta Oproiu.