Articles

Romania Chapter – WTR Yearbook 2016

 Published in “World Trademark Review Yearbook”, 2016 – 2017

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 Community 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 distinctiveness, this can be overcome by showing that the mark has acquired istinctiveness through extensive use.
While use is not required to acquire trademark rights, it is required to maintain the trademark registration and to establish infringement.
The protection afforded to unregistered marks is thus limited to the following:

• marks 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 and to the Romanian target market of the products or services for which the trademark is sed.

Registered marks
Ownership
The Trademarks Law imposes no special requirements on the applicant or owner of a
trademark.
Representation
If a representative is named, a power of attorney is necessary. This need not be notarised or legalised.
Scope of protection
Protected: A ‘trademark’ is defined as “a sign that is capable of graphical representation and serving to distinguish the goods or services of an undertaking from hose of other undertakings”.
Not protected: The following marks, among others, are excluded from protection under the
Trademarks Law:

• marks that cannot qualify as trademarks within the sense mentioned above;
• marks that lack distinctive character;
• marks consisting exclusively of signs or indications that have become customary in the current language or in the good-faith and established practices of the trade;
• marks consisting exclusively of signs or indications that may serve in trade to designate the ind, quality, quantity, intended purpose, value, geographical origin or time of production of he goods or provision of the services, or other characteristics of the goods or services;
•  marks consisting exclusively of the shape of the goods which results from the nature of the goods themselves, which is necessary to obtain a technical result or which gives substantial value to the goods;
• marks that are 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 rue place of origin;
• marks containing or consisting of a geographical indication identifying wines or spirits that do not originate in the place indicated;
• marks that contain, without the owner’s consent, the likeness or surname of a well-known erson in Romania; and
• marks that contain, without the permission of the 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.

Absolute grounds for refusal of registration because a mark is not distinctive may be overcome by showing that the mark has acquired distinctiveness through extensive use.
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 risk of public confusion, including the risk of association with the earlier trademark;
• is identical or similar to an earlier Community trademark for goods or services that are not similar to those in relation to which the earlier Community trademark is registered, where the earlier Community trademark enjoys a certain reputation in the European Union and the use of the subsequent trademark would confer an undeserved advantage deriving from either the distinctive character or reputation of the earlier Community 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 certain reputation in Romania and the use of the subsequent trademark would confer an undeserved advantage deriving from either the distinctive character or reputation of the earlier trademark;
• is applied for after another user has obtained rights in an unregistered trademark or another sign used in commerce or, as the case may be, claims a priority date later than that on which rights were obtained in the unregistered sign, where the unregistered trademark or sign grants its titleholder a right to forbid the use of the subsequent trademark;
• is identical or similar to an earlier registered trademark for identical or similar products or services, granting a right that expired due to non-renewal over two years before the filing date, if the titleholder of the earlier trademark either agreed to the registration of the subsequent trademark or had not 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 filing has been made in bad faith by the applicant.

Moreover, a sign cannot be registered asa trademark if it infringes other prior rights, such as previously registered/filed trademarks, protected in the Romanian territory.

Procedures
Examination
To register a trademark, a written application must be filed with the State Office for Inventions and Trademarks (SOIT) under the conditions provided by the Trademarks Law. SOIT will first examine the application to ensure that it satisfies all formal requirements and then specify a deposit date within one month of filing.A trademark application is electronically published within seven days of filing with SOIT. Opposition/observations Within two months of electronic publication of a trademark application, any interested person may file an opposition to the registration regarding the application based on the abovementioned relative grounds. In addition, within the same timeframe an interested person may file observations regarding the trademark application based on the abovementioned absolute grounds.
The opposition is examined by a SOIT commission, which will issue a notification of acceptance or refusal of the opposition, which is binding at the substantive examination of the trademark application.

In principle, SOIT carries out a substantive examination of the trademark application within six months of electronic publication of the trademark application, as long as the registration and examination fees have been paid.
According to the Trademarks Law as currently in force, during the substantive examination, SOIT cannot perform an ex officio examination of the relative grounds for refusal for registration of a trademark.
These grounds should be taken into account only if an opposition has been filed. Despite the legal provisions, SOIT follows in practice an internal act without a normative value which cannot modify the Trademarks Law, namely Instruction 5/17.10.2012, according to which SOIT examiners perform an ex officio examination based on relative grounds even if no opposition has been filed.

Following the substantive examination, SOIT will issue a decision of acceptance or refusal of the trademark for registration. If SOIT accepts the trademark for registration, the mark will be published electronically within two months of this decision.
Searches
SOIT offers several trademark searches as a paid service to interested parties, in addition to the trademark database which is freely available on its website (http://api.osim.ro:18080/marci/index.jsp ).
Contestation

SOIT’s decision to accept or refuse a trademark for registration may be contested by any interested party within 30 days of its communication or publication, before SOIT’s Contestations Committee. The decision ofSOIT’s Contestations Committee may be further appealed before the competent courts.

Registration

SOIT will record in the Trademarks Register the trademark in relation to which a registration decision has been issued, upon payment of the legal fees. After this registration, SOIT will issue the trademark registration certificate.
A trademark remains valid for 10 years 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 it is registered. If a licence has been registered, the surrender will be recorded 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 registration of the trademark in the Trademarks Register, or if this use has been suspended for an uninterrupted period of five years.
It is the trademark owner, not the interested third party, which must provide the court with evidence of use (or legitimate
reasons for non-use).

Under the Trademarks Law, 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 usual in the trade of goods or services for which it is registered;
• as a result of its use by the rights holder or with the rights holder’s 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 Tribunal 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 industrial design or model, other industrial property rights or copyright.

The limitation period 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 evidentiary burden may be heavier in the case of unregistered rights and the case may thus take longer to progress.Generally, the Trademarks Law provides owners of registered trademarks 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.
Apart from the civil action, the owner of a registered trademark may also file a criminal petition against the infringer, who may be subject to imprisonment for up to two years or a criminal fine. Where a civil damages 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 goodfaith principle may be enjoined by the court to desist or refrain from the act in question.The Unfair Competition Law further qualifies as a criminal offence the use of a “firm logo or of a packaging which may create confusion with that legitimately used by another merchant… [and] the manufacturing in any manner, import, export, warehousing, offering for sale or sale or merchandise or services that have false mentions regarding…trademarks [or] geographical indications… in order to induce in error the other merchants and the beneficiaries”. The infringer may be subject to up to two years’ imprisonment or a criminal fine; where a civil damages action is incorporated in the criminal complaint proceedings, the infringer may also be liable to pay damages.
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 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. The duration of a criminal action will also be extended by as long as is necessary to complete the police investigation and for the Prosecutor’s Office to examine the file.

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 effected in writing and signed by the parties to the assignment, under threat of nullification.The assignment may be effected 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 contains 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 nullification of the assignment. According to the Trademarks Law, an assignment must be registered in order to become opposable against third parties. Such registration does not concern the existence of the agreement per se, but rather affords the trademark owner and licensee the opportunity to publicise the agreement’s existence. SOIT may refuse to register 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. Registration proceedings with SOIT may take up to three months.

Related rights
The main areas of overlap between trademarks and other IP rights concern copyright and industrial designs. In this respect, the owner of an earlier right in a protected industrial design or copyright may file an opposition against a published trademark or a cancellation action against a registered trademark.Generally, Romanian IP legislation recognises artistic and intellectual creations for dual protection. The Copyright Law 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 Design and Models Law protects the creative act of designing the formal or ornamental appearance of a product that satisfies aesthetic requirements. Design protection is granted through registration 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 ICANN’s rules and policy, which provide, among other things, that disputes over domain names may be decided by arbitration panellists.