Patent marking in Romania
Authors: Dariana Istrate and Luciana Anghel
1. Definition & Legal Provisions
Indicating a patent number on the product or, when in the course of issuing such, the “patent pending” indication applied on either the packaging or the product itself, is typically understood in IP terms as “patent marking”.
Patent marking is not mandatory in Romania and, in consequence, there is no standard format for the patent marking to be applied on the patented products.
Observing the existing international market practice and in view of the Romanian consumer protection principle of transparent information (i.e. correctly informing consumers on the offered products), it is recommendable to state that a product is patented or that the patent is pending, and also to provide the number of the patent, therefore providing enough information in order for a third party to easily identify the specific IP right that covers the specific product (e.g. Patent information: “Patent no.”, “Patent applied for number/no.”, “Patent pending number/no.”, “Pat. Pending”).
It is important to distinguish between marking and labels, considering that according to the European Union legislation, a marking is a symbol and/or pictogram that appears on a product or its respective packaging[1] (“patent marking” is understood as affixing on either the packaging or the product itself the number of the patent that covers the product).
Also, the Romanian law does not provide a specific language to be used for patent marking.
However, from a labeling perspective (which is regulated by the consumer protection legislation), it should be noted that, in Romania, all information regarding products and services offered to consumers, accompanying documents, including information on product safety and instructions for use, as well as contracts, including pre-formulated ones, must be written in Romanian, regardless of their country of origin, without excluding their presentation in other languages[2]. As a consequence, patent information to be applied on products (in terms of a label) must be firstly presented in Romanian, without excluding their presentation in other languages.
2. Benefits which may arise from Patent Marking
As patent marking is not regulated under the Romanian legislation, in terms of enhanced damages patent marking per se does not provide any opportunity. However, intentional infringement may be considered by the judge in a court case, when individualizing the penalty to be established in the case brought before the Romanian courts.
To conclude, patent marking is not mandatory in Romania and marked products have no implications when awarding compensation in case of infringement.
3. Virtual patent marking
There are countries like the US or the UK where a list of the patents covering a product is provided on a website. Such list is connected to the goods which have to be marked, replacing the traditional patent marking.
Basically, virtual patent marking consists in indicating on the goods a website address that directs any third party to a web page providing information on the rights that protect the connected goods; this method has greater advantages in terms of up-to-date information.
The Romanian legislative framework on patents is also silent with respect to such patent marking formats. However, if reasonable requirements on consumers’ right to be provided with full, accurate and correct information are respected and clear and intelligible tools are provided – for example, it is recommended to ensure that the relevant website is accessible to consumers without charge and leads straight to the page/section containing the information on the patent – virtual marking should be permitted.
As a side note, virtual marking is considered less widely accepted than the conventional method of physically marking the products with the patent that covers it, but a step forward is expected in this sense.
4. Consequences of a false marking
In the absence of such specific legislation, in case of infringement, the general national provisions on patents for inventions, consumer protection, unfair competition and misleading advertising shall apply. Also, it should be noted that the European Patent Convention (EPC) does not contain requirements or specific provisions on patent marking either. Likewise, the EPC is silent about the implications of patent marking and leaves this to national laws, in many countries including national competition laws – as an example, in accordance with the Austrian Law Against Unfair Competition, the false patent (utility model) marking is regarded as a misleading commercial practice. The offender may be sued for discontinuance, elimination and, if appropriate, monetary compensation by anyone interested in the observance of fair commercial practices (for example, consumers, competitors, the Federal Chamber of Commerce etc.).
The concept of false/misleading patent marking is not defined under the Romanian applicable legislation. Consequently, false/misleading patent marking falls under the general definition of unfair competition practice: “Any commercial business practices that are contrary to the good practices and general principle of good faith and that cause or may cause harm to any market participant shall be deemed to constitute unfair competition.”[3]
Examples for false/misleading patent marking are: falsely claiming to have registered a patent when you have not registered it (including using in advertising or affixing to any unpatented product the indication “patent”/”patent pending” etc. or the related application number), use of another one’s patent without the consent of the patentee, with the intent of counterfeiting or imitating or of deceiving the consumers and inducing them to believe that the product was made/sold/offered for sale with the consent of the patentee.
In accordance with the provisions regulating unfair competition, “manufacturing in any manner, importing, exporting, storage, offering for sale or selling goods/services bearing false indications regarding patents of inventions, for the purpose of misleading other traders and consumers constitute criminal offence and is subject to imprisonment from 3 months to 2 years or criminal fine”[4].
Advertising the products bearing the false/misleading indications may also be subject to fines, as misleading advertising is prohibited under the law on misleading advertising and comparative advertising constitutes administrative offence and is sanctioned with fines ranging from RON 3,000 (approx. EUR 610) to RON 30,000 (approx. EUR 6,100)[5] and, on a case by case basis, complementary measures (cessation of misleading advertising/prohibition of misleading advertising if it has not yet been brought to the attention of the public, but this is imminent).
To conclude, under Romanian law, there is no specific legal benefit for patent marking. However, we cannot ignore that products that contain patent references may deter/discourage competitors from counterfeiting a patented product (from a practical perspective) and may contribute to a positive marketing policy, improving the manufacturer’s position on the relevant market.
[1] https://www.trade.gov/country-commercial-guides/romania-labelingmarking-requirements
[2] Ordinance 21/1992 on consumer protection
[3] the Law no. 11/1991 on unfair competition
[4] article 5 letter f) of Law no. 11/1991
[5] Law no. 158/2008
