Articles

Romanian Chapter in “Intellectual Property & Antitrust 2013”

Published in “Getting the Deal Through – Intellectual Property & Antitrust 2013”

1 Intellectual property law

Under what legislation are intellectual property rights granted? Are there restrictions on how IP rights may be exercised, licensed or transferred? Do the rights exceed the minimum required by the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPs)?

Intellectual property rights are mainly regulated by the following Romanian normative acts:

• Law No. 8/1996 on copyright and related rights, as further modified and completed (the Copyright Law);
• Law No. 64/1991 on patents, as republished (Patents Law) and Government Decision No. 547/2008 for the approval of the Regulation for implementation of Law No. 64/1991 on patents;
• Law No. 350/2007 on utility models (the Utility Models Law) and Government Decision No. 1457/2008 for the approval of the Regulation for implementation of Law No. 350/2007 on utility models;
• Law No. 84/1998 on trademarks and geographical indications, as republished (the Trademarks Law) and Government Decision No. 1134/2010 for the approval of the Regulation for implementation of Law No. 84/1998 on trademarks and geographical indications (the Trademarks Regulation);
• Law No. 129/1992 on the protection of designs and models, as republished (the Designs Law) and Government Decision No. 211/2008 for the approval of the Regulation for the implementation of Law No. 129/1992 on the protection of designs and models;
• Law No. 16/1995 on the protection of topographies of semiconductor products, as republished (the Topographies of Semiconductor Products Law) and Order No. 6/2007 of the State Office for Inventions and Trademarks (SOIT) for the approval of the Norms for the implementation of Law No. 16/1995 on the protection of topographies of semiconductor products, as republished; and
• Law No. 255/1998 on the protection of new plant varieties, as republished (New Plant Varieties Law) and Order No. 150/2012 for the approval of the Regulation for implementation of Law No. 255/1998 on the protection of new plant varieties issued by the minister of Agriculture and Rural Development.

In general, the industrial property rights (copyright and related rights not included) are acquired under Romanian IP legislation through various registration procedures. There are also exceptions applicable to industrial property rights protected without registration, such as notorious trademarks.

The Copyright Law protects the moral and patrimonial rights conferred by creation of original works, irrespective of the concrete manner of expression, value or destination and irrespective of any registration formalities.

As a general rule, IP rights may be freely exercised, licensed or transferred by their legitimate owners.

However, there are certain restrictions and exceptions:

• related to the exercise of copyright and related rights – the private copy exception, the right to reproduce copyright-protected works within judicial, parliamentary or administrative proceedings or for public safety purposes, etc;
• regarding the transfer of rights – moral rights cannot be transferred or waived. Also, the non-exclusive assignee of economic rights related to copyright may not further transfer the acquired rights, without the express consent of the assignor;
• related to the exercise of the rights over patents, the Patents Law provides for several situations in which mandatory licences may be granted upon request by interested third parties by the Bucharest Tribunal. The mandatory licences may be transferred only together with the part of the undertaking or of the business assets that benefit from the respective use;
• similarly to the Patents Law, the Topographies of Semiconductor Products Law provides for several situations in which mandatory licences may be granted upon request by interested third parties by the Bucharest Tribunal. The mandatory licences may be transferred only together with the patrimony (business assets) attached to their application;
• related to the exercise of rights over trademarks, 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 of the registration of the trademark within the Trademarks Register or if this use has been suspended for an uninterrupted period of five years. Regarding the transfer of rights, identical or similar trademarks having the same registered owner and used for identical or similar goods or services may be assigned only as a whole and to one person, under the sanction of nullity of the assignment. SOIT may refuse to register a trademark assignment if it results in a clear misrepresentation, such that the public will be mistaken 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 accepts to limit the trademark assignment to the products and services for which the trademark is not misleading; and
• a non-exclusive licensee that has been granted the right to exploit a patented new plant variety may not transfer this acquired right to third parties.

The IP rights granted under Romanian IP legislation exceed, in certain cases, the minimum provided under the TRIPs Agreement (for example, the initial registration term and each renewal term of trademarks is 10 years, which is above the minimum of seven years provided under the TRIPs Agreement; similarly, the validity period of designs is 10 years and can be renewed for three successive periods of five years, above the minimum 10 years provided under the TRIPs Agreement, etc).

2 Responsible authorities

Which authorities are responsible for administering IP legislation?

The authorities responsible for administering IP legislation are mainly the Romanian Copyright Office (ORDA), the Romanian State Office for Inventions and Trademarks (SOIT) and the State Institute for Variety Testing and Registration (ISTIS).

ORDA is a specialised central public administration body subordinated to the government, having legal personality, being the sole authority for regulation, evidence (through national registries), surveys, authorisation, arbitration and technical-scientific expertise in the copyright and related rights field.

SOIT is a specialised body of the central public administration subordinated to the Ministry of Economy, Trade and the Business Environment, being the sole Romanian authority empowered to grant protection for industrial property, in accordance with the national legislation in the field and with the provisions of the conventions and international treaties to which Romania is a party.

ISTIS is a specialised body subordinated to the Ministry of Agriculture and Rural Development, being the sole Romanian authority empowered to grant protection to new plant varieties.

In addition, an important role in protecting IP rights is fulfilled by the customs authorities, which may retain goods infringing intellectual property rights or suspend the clearance operations for such goods, or do both.

3 Proceedings to enforce IP rights

What types of legal or administrative proceedings are available for enforcing IP rights?

Generally, an IP rights owner may enforce its rights either in civil or criminal proceedings, or both. Thus, for example, an owner may file criminal complaints against infringers, actions for cancellation of conflicting IP rights, civil actions in infringement or unfair competition with the possibility of claiming damages for the incurred loss. Also, the IP rights owner may seek temporary measures by way of a preliminary injunction, under the provisions of the Romanian Civil Procedural Code.

The owners of intellectual property rights may also file with the National Customs Authority applications for customs action, based on which, the customs authorities may retain the goods likely to infringe the intellectual property rights that are the object of the application or may suspend the clearance operations for such goods, or do both.

In addition, the industrial property rights owners may oppose the registration of conflicting industrial property rights in administrative proceedings before SOIT. SOIT’s decisions issued in these proceedings may be further appealed in front of the competent courts.

4 Remedies

What remedies are available to a party whose IP rights have been infringed?

A party whose IP rights have been infringed may seek civil or criminal remedies, or both. Thus, for example, such a party may request the court to prohibit the unlawful use of its IP rights and to pay damages for the incurred loss (to the extent a loss is proved). Also, the IP owner may request the court to order, at the expense of the infringer, the seizure and destruction of the infringing goods and of the equipments, instruments and materials used for their manufacture. In addition, the infringer may be compelled to disseminate the information on the decision rendered by the court, through different means of communication, such as display or publication of the decision or additional publicity measures adapted to the particular circumstances of the case, including a conspicuous advertisement.

Also, if not filed, a customs application may be filed based on which, as mentioned above, the customs authorities may retain the goods likely to infringe the intellectual property rights that made the object of the application or may suspend the clearance operations for such goods, or do both. The goods that are proved to infringe IP rights may be destroyed or offered free of charge to institutions, organisations, etc, under certain conditions, among which is the consent of the IP owner.

5 Competition and abuse of IP rights

What consideration has been given in legislation or case law to competition in the context of IP rights, and in particular to any anticompetitive or similar abuse of IP rights?

According to the Patents Law, in order to remedy a practice determined to be anti-competitive by means of a judicial or administrative procedure, a mandatory licence may be granted for inventions in the field of semiconductor technology.

The Topographies of Semiconductor Products Law provides that a mandatory exploitation licence may be granted by the Bucharest Tribunal to people who, despite all efforts, did not acquire the right holder’s authorisation to exploit a protected topography, if such a licence is required in emergency situations related to violation of the Competition Law No. 21/1996, as republished.

According to the Plant Varieties Law, the rights conferred by patents for new varieties and their exercise must not violate the legal provisions regulating competition.

Incidental legislation, such as the Government Ordinance No. 52/1997 on the legal regime of franchise, as republished, provides that the franchise agreement must be concluded with the observance of the principle that non-compete clauses are to be included in the agreement in order to protect the know-how. In this sense, in the case of an exclusivity agreement, the franchisor may impose a noncompete clause in order to prevent the transfer of the know-how communicated during the agreement. After termination of the agreement, post-contractual relations between parties must be based on fair competition rules. The franchisor may impose firm obligations on the former beneficiary, thus ensuring the protection of business confidentiality and, in particular, preventing the use of the know-how by competitors.

6 Remedies for deceptive practices

With respect to trademarks, do competition or consumer protection laws provide remedies for deceptive practices in addition to traditional ‘passing off’ or trademark infringement cases?

Law No. 11/1991 on fighting against unfair competition qualifies the following as criminal offences sanctioned by imprisonment or a fine:

• the use of a trademark in such a manner that is likely to create confusion with another trademark lawfully used by a trader;
• the placement on the market of counterfeited products, whose commercialisation adversely affects the holder of the trademark and misleads the consumer with respect to the quality of the product or service; and
• the manufacturing, importation, exportation, storage, offering for sale or selling goods or services bearing false mentions (specifications or indications) regarding trademarks for the purpose of misleading other traders and beneficiaries.

In addition to criminal sanctions, the offender may also be compelled to pay damages for any loss caused.

Regarding consumer protection legislation, Law No. 363/2007 on combating unfair practices of traders in their relations with consumers and the harmonisation of regulations with the European consumer protection legislation, states that any trading activity, including comparative advertising, that creates confusion with another product or with the trademark, name, or other distinctive signs of a competitor, thus determining the average consumer to take a trading decision that he or she would not otherwise have taken, qualifies as a misleading commercial practice. The authorities may also suspend the trader’s activity until the cessation of the misleading practice, as a complementary sanction.

In addition to the above, it must be noted that misleading advertising is qualified as a minor offence under Law No. 158/2008 on misleading and comparative advertising, and is sanctioned with a fine.

7 Technological protection measures and digital rights management

With respect to copyright protection, is WIPO protection of technological protection measures and digital rights management enforced in your jurisdiction? Does legislation or case law limit the ability of manufacturers to incorporate TPM or DRM protection limiting the platforms on which content can be played? Could TPM or DRM protection be challenged under the competition laws?

The TPMs and DRM are provided under article 1385 of the Copyright Law and may be freely used by the right holders. However, the right holders using such protection measures have the obligation of ensuring the beneficiaries are aware of certain exceptions expressly provided by law (for example, the right to reproduce copyright protected works within judicial, parliamentary or administrative proceedings or for public safety purposes, etc) and the necessary measures that enable the legal access to the works or to any other object of the protection, but retain the right to limit the number of copies made within these conditions.

In the case of the exercise of the right to use TPMs and DRM would violate competition laws, then such might be challenged accordingly.

8 Industry standards

What consideration has been given in legislation or case law to the impact of the adoption of proprietary technologies in industry standards?

The standardisation activity is mainly regulated in Romania under Government Ordinance No. 39/1998 on the national standardisation activity, as approved by Law No. 355/2002. The national standardisation body is the Romanian Standards Association (ASRO), a private legal entity of public interest, organised as a non-profit association and a member of CEN, CENELEC, CEI, ISO and ETSI (it is an observer member of the latter).

One of ASRO’s main functions is to elaborate and approve national standards. Government Ordinance No. 39/1998 does not expressly regulate the adoption of proprietary technologies in industry standards, but provides that ASRO is the owner of the copyright over the national standards and the owner of the trademarks attesting conformity with the national standards.

ASRO is the sole entity authorised to distribute, through selling, the national, European and international standards, and to supervise the respect of copyright over such. Any unauthorised reproduction or copy, distribution of standards, translation or creation of derivative works, without ASRO’s prior written consent, represents a copyright infringement.

Competition

9 Competition legislation

What legislation sets out competition law?

The applicable legislation in the field of competition law consists of Law No. 21/1996 (the Competition Law), together with secondary legislation, including regulations and guidelines issued by the Romanian Competition Council.

Romanian competition legislation has recently undergone significant changes aimed at bringing it in line with EU regulations and the case law of European courts.

The Competition Law was substantially amended through the enactment of Emergency Government Ordinance 75/2010 (EGO 75), which was subsequently modified and approved by Law 149/2011, which entered into force on 15 July 2011.

The most significant changes to the Competition Law include:

• self assessment: the elimination of the notification system and replacement with the self-assessment procedure in the case theat the conditions for benefiting from a block exemption are not met;
• dominant position: a rebuttable presumption of dominance in the case that the relevant market shares are above 40 per cent;
• merger control: the application of the significant impediment of effective competition (SIEC) test for the assessment of the compatibility of an economic concentration with a normal competitive environment;
  • the notification of a merger is required before implementation (no longer within a certain time period from signing);
  • the possibility to notify the concentration on the basis of a good-faith intention to conclude an agreement or a public announcement of the intention to make a public offering; and
  • an authorisation fee of between e10,000 and e25,000;
• guarantees for the undertakings: express regulation of the legal professional privilege;
• sanctions:
  • fines for public administration authorities in cases of procedural infringements of competition rules;
  • a reduction of between 10 to 30 per cent of the fine for acknowledgment of the breach; and
  • criminal liability may also entail the prohibition to hold a position similar to that used in committing the breach;
• challenge in court: the Court of Appeal will only suspend a Competition Council decision on condition of a bail payment, whose amount is to be set by the Court; and
• private enforcement: individuals who claim to be harmed due to an anti-competitive practice are entitled to file a request for damages within two years of the date when the legal means for challenging the decision of the Competition Council on which the claim is based are exhausted.

10 IP rights in competition legislation

Does the competition legislation make specific mention of IP rights?

The Competition Law does not make a specific mention of IP rights. The compatibility of agreements involving IP is to be analysed according to the conditions and criteria set by the EU specific regulations (for example, technology transfer).

In the field of merger control, the Romanian Merger Regulation and Guidelines (currently in force) contain several provisions that make specific mention of IP rights, in line with EU provisions.

The Romanian Merger Regulation implemented the provision of the EC Consolidated Jurisdictional Notice, according to which a transaction confined to intangible assets such as brands, patents or copyrights may amount to a concentration if those assets constitute a business with a market turnover. In any case, the transfer of licences for brands, patents or copyrights, without additional assets, can only fulfil these criteria if the licences are exclusive at least in a certain territory and the turnover-generating activity is transferred. For nonexclusive licences it can be excluded that they may constitute on their own a business to which a market turnover is attached.

In line with the EU Guidelines on restrictions directly related and necessary to concentration, the Romanian Merger Guidelines provide that non-competition clauses cannot be considered necessary when the transfer is limited to exclusive industrial property rights. In addition, licences of patents, of similar rights or know-how may be considered necessary to the implementation of the concentration and in any event need not be limited in time.

11 Review and investigation of competitive effect

Which authorities may review or investigate the competitive effect of conduct related to IP rights?

The Romanian Competition Council is competent to review and investigate the competitive effect of conduct related to IP rights.

For the purpose of applying articles 101 and 102 of the TFEU, the Romanian Competition Council may perform inspections upon the request of the EC or a national competition authority of an EU member state, based on the inspection order issued by the president of the Romanian Competition Council.

12 Competition-related remedies for private parties

Do private parties have competition-related remedies if they suffer harm from the exercise, licensing or transfer of IP rights?

A private party, having suffered harm from the exercise, licensing or transfer of IP rights, may file a complaint with the Romanian Competition Council, the opening of an investigation in such a case being possible provided that the complainant shows a direct and genuine harm caused by the alleged breach of competition rules. Following the investigation, the Romanian Competition Council may order the undertakings concerned to cease their anti-competitive practice, may impose interim measures, accept commitments and impose fines.

Irrespective of the sanctions applied by the competition authorities, natural or legal people maintain their right to request in court full indemnification for the damage caused by anti-competitive behaviour. The court may also order temporary measures in urgent cases, by way of injunctions, with the aim of preventing imminent damage that could not be remedied, or preserving a right that would be otherwise prejudiced, or for overcoming the difficulties that might occur throughout an enforcement procedure. No such private actions have been filed in Romania so far.

Contractual remedies are also available. Private parties may set aside the contractual terms of agreements involving IP rights that give rise to anti-competitive practices and are prohibited by articles 5 and 6 of the Romanian Competition Law (the equivalent of articles 101 and 102 TFEU) as being void and unenforceable.

13 Competition guidelines

Has the competition authority issued guidelines or other statements regarding the overlap of competition law and IP?

The Romanian Competition Council has not issued specific statements regarding the overlap of competition law and IP. In terms of legislation, agreements involving the transfer of technology are to be assessed by the Romanian Competition Council pursuant to the conditions and criteria set by the EU specific regulations (EC Block Exemption Regulation No. 772/2004 of 27 April 2004 (TTBER)).

14 Exemptions from competition law

Are there aspects or uses of IP rights that are specifically exempt from the application of competition law?

The assessment of vertical agreements containing provisions granting IP rights is performed based on the Vertical Block Exemption Regulation, only when the licensing or assignment of IPRs does not represent the agreement’s core objective and their effect on the market is not similar to the one of non-exempted restrictions. Agreements whose principal objective is the transfer of IPRs will have to comply with the TTBER provisions.

15 Copyright exhaustion

Does your jurisdiction have a doctrine of, or akin to, ‘copyright exhaustion’ (EU) or ‘first sale’ (US)? If so, how does that doctrine interact with competition laws, for example with regard to efforts to contract out of the doctrine, to control pricing of products sold downstream and to prevent ‘grey marketing’?

The copyright owner has the exclusive right to authorise or forbid the distribution of the protected work. However, the Copyright Law provides the exhaustion of the distribution right after the first sale or the first transfer of ownership over the work (either original or copy) on the internal market, where the transfer is made by the right holder or with his or her consent.

The Romanian Competition Council and Romanian Courts would most likely have regard to the well-established case law of the European Court of Justice (Javico v Yves Saint Laurent; Levi Strauss & Co and Levi Strauss (UK) Ltd v Tesco Stores) and would therefore decide that, should the products protected by IP rights be placed on the market in an EU member state by the right holder or with its consent, from a competition standpoint, they could be imported from such a member state to another one and sold, without the distributor in the member state or the right holder having the possibility to prohibit such import and resale on the basis of territorial protection.

16 Import control

To what extent can an IP rights holder prevent ‘grey-market’ or unauthorised importation or distribution of its products?

Under the Romanian legal system, parallel trading is legal or allowed in principle, given that the Romanian trademark regime is based on an EU/EEA exhaustion system, whereby the trademark owner may not prohibit its use in relation to goods that have been placed on the market within the EU and EEA under that trademark by the owner or with his or her consent.

However, the trademark owner may prevent the resale of its products for legitimate reasons, in particular if the condition of the products is altered or modified after they are put on the market.

It follows from the above that the trademark owner may only prevent parallel imports of products from outside the EU/EEA territory in any of the EU/EEA member states.

It should be noted that from the perspective of the Romanian Competition Law as interpreted by Romanian Competition Council recently, the ban on exports outside EEA becomes similar to the ban on exports inside EEA

17 Competent authority jurisdiction

Are there circumstances in which the competition authority may have its jurisdiction ousted by, or will defer to, an IP-related authority, or vice versa?

No, the Romanian Competition Law does not provide for such a possibility.

Merger review

18 Powers of competition authority

Does the competition authority have the same powers with respect to reviewing mergers involving IP rights as it does with respect to any other merger?

The Romanian Competition Council has the same powers with respect to reviewing mergers involving IP rights as it does with respect to any other merger.

19 Analysis of the competitive impact of a merger involving IP rights

Does the competition authority’s analysis of the competitive impact of a merger involving IP rights differ from a traditional analysis in which IP rights are not involved? If so, how?

Mergers involving IP rights are assessed on the basis of the same test as other mergers, that is, in terms of whether they would raise significant impediments to effective competition, in particular through the creation or strengthening of a dominant position.

The presence of IP elements in a concentration is likely to influence the analysis performed by the Romanian Competition Council with respect to the following main aspects.

In terms of the commitments that the parties may propose with a view to rendering the concentration compatible with the common market

To give an example from the Romanian Competition Council practice, the authorisation of a concentration through the acquisition of control over certain trademarks and assets was made subject to the purchaser’s commitment to give up the acquisition of specific trademarks together with the amendment of the non-competition undertaking, with a view to reserve for the purchased company the right to manufacture and market, without any limitation from the purchaser’s side, the trademarks at stake.

The likelihood and extent of market foreclosure effects

The Romanian Competition Council’s analysis is focused on whether the control of key technology or IP rights may lead to concerns of foreclosure of competitors that depend on the technology or IP rights as an essential input for the activities in a downstream market.

Conditions under which non-competition, non-solicitation or confidentiality clauses may qualify as ancillary restraints

Under the Ancillary Restraints Guidelines, non-competition clauses are justified for periods of up to three years, when the transfer of the undertaking includes the transfer of customer loyalty in the form of both goodwill and know-how. When only goodwill is included, they are justified for periods of up to two years.

In one case, the Romanian Competition Council considered the unlimited confidentiality obligation imposed on the seller, as regards the transferred technical know-how, to constitute an ancillary restraint, in accordance with the applicable competition rules.

In addition, the Ancillary Restraints Guidelines contain detailed rules regarding the granting of licences of IP rights or know-how by parent companies or vendor to the joint venture or purchaser with a view to ensure the full exploitation of the assets transferred. The conditions required for such agreements to be considered as ancillary restraints mirror those under the EC Notice on Ancillary Restraints.

20 Challenge of a merger

In what circumstances might the competition authority challenge a merger involving the transfer or concentration of IP rights?

A merger involving the transfer or concentration of IP rights may be challenged under the same means of challenge as any other merger. The SIEC test applies to any merger case, irrespective of the transferred business.

21 Remedies to alleviate anti-competitive effect

What remedies are available to alleviate the anti-competitive effect of a merger involving IP rights?

To alleviate the anti-competitive effect of a merger, commitments may be proposed by the parties and accepted by the Romanian Competition Council (divestiture – of assets, in particular of brands and licences, carve-outs, rebranding and access commitments).

In line with EU law, the granting of a licence will generally not be considered appropriate where divestiture of a business seems feasible.

Specific competition law violations

22 Conspiracy

Describe how the exercise, licensing, or transfer of IP rights can relate to cartel or conspiracy conduct.

The exercise, licensing or transfer of IP rights can fall within the prohibition of cartels. For example, under the technology transfer block exemption rules, competitors can use cross-licensing with reciprocal running royalties as a means of coordinating prices on downstream product markets; however, cross-licences with reciprocal running royalties will only be treated as price fixing where the agreement is devoid of any pro-competitive purpose and therefore does not constitute a bona fide licensing arrangement. Also, technology pools (which necessarily imply joint selling of the pooled technologies) amount to a price-fixing cartel if they are composed solely or predominantly of substitute technologies.

23 (Resale) price maintenance

Describe how the exercise, licensing, or transfer of IP rights can relate to (resale) price maintenance.

Under the technology transfer block exemption rules, agreements between competitors with the aim of fixing prices for products sold to third parties, including products incorporating the licensed technology, are deemed hard-core restrictions of competition. Price fixing can, for instance, take the form of a direct agreement on the exact price to be charged or on a price list with certain allowed maximum rebates. It is immaterial whether the agreement concerns fixed, minimum, maximum or recommended prices. Price fixing can also be implemented indirectly by applying disincentives to deviate from an agreed price level, for example, by providing that the royalty rate will increase if product prices are reduced below a certain level. However, an obligation on the licensee to pay a certain minimum royalty does not in itself amount to price fixing.

Agreements between non-competitors with the direct or indirect aim of establishing a fixed or minimum price level to be observed by the licensor or the licensee when selling products to third parties are also deemed to be competition restrictions by their object. However, the provision of a list of recommended prices or the imposition of a maximum price on the licensee by the licensor is not considered in itself as leading to fixed or minimum selling prices.

Acquisition and merger control – competition

24 Exclusive dealing, tying and leveraging

Describe how the exercise, licensing, or transfer of IP rights can relate to exclusive dealing, tying and leveraging.

If reciprocal exclusive licensing between competitors is a hardcore restriction (market sharing), non-reciprocal exclusive licensing between competitors is block exempted up to the market share threshold of 20 per cent, above this market share threshold being necessary to analyse the likely anti-competitive effects. Exclusive licensing between non-competitors is likely to fulfil the exemption conditions, since the right to grant an exclusive licence is generally necessary in order to induce the licensee to invest in the licensed technology and to bring the products to market in a timely manner.

Under the technology transfer block exemption rules, tying and bundling are not block exempted above the market share thresholds of 20 per cent in the case of agreements between competitors and 30 per cent in the case of agreements between non-competitors. Tying can result in efficiency gains where the tied product is necessary for a technically satisfactory exploitation of the licensed technology or for ensuring that production under the licence conforms to quality standards respected by the licensor and other licensees. Tying is likely to be pro-competitive where the tied product allows the licensee to exploit the licensed technology significantly more efficiently.

25 Abuse of dominance

Describe how the exercise, licensing, or transfer of IP rights can relate to abuse of dominance.

The classical abuse of dominance involving IP rights is the refusal to license, discussed in question 26.

26 Refusal to deal and essential facilities

Describe how the exercise, licensing, or transfer of IP rights can relate to refusal to deal and refusal to grant access to essential facilities.

A refusal to license IP rights would amount to an abuse of dominance under exceptional circumstances.

In addition to the conditions that normally have to be fulfilled in order for a refusal to supply to be deemed abusive (indispensability of the input; likely negative effect on competition; lack of objective justification), it must also be shown that the refusal to grant the licence prevents the development of the market for which the licence is an indispensable input, to the detriment of consumers. Such a condition would most likely be met if the undertaking requesting the licence intends to produce new goods or services for which there is a potential consumer demand.

The indispensability test applied in the case of IP rights would imply that competitors are unable to turn to any workable alternative technology, in particular where the technology has become a standard on the market.

Remedies

27 Remedies for violations of competition law involving IP

What sanctions or remedies can the competition authority or courts impose for violations of competition law involving IP?

Fines ranging from 0.5 per cent to 10 per cent of the total turnover of the financial year before sanctioning may be imposed in the case of breach of article 5 of the Romanian Competition Law (the equivalent of article 101 TFEU) or of article 6 of the Romanian Competition Law (the equivalent of article 102 TFEU), which as described above, can also involve IP rights.

Divestiture of IP rights may be proposed by merging parties in order to render the proposed economic concentration compatible within a normal competitive environment.

Where the competition concerns arise from the market position held by IP rights, a divestiture of the IP rights is the preferable remedy as it eliminates a lasting relationship between the merged entity and its competitors. However, the Competition Council may accept licensing arrangements as an alternative to divestiture where, for instance, a divestiture would impede efficient, ongoing research or where a divestiture would be impossible due to the nature of the business.

Damages may only be awarded by ordinary courts as per question 12.

The Competition Council may impose as an interim measure the granting of a licence or may order access to an essential facility. Such measures may be imposed on the basis of a prima facie finding of infringement in cases of urgency due to the risk of serious and irreparable damage to competition.

28 Competition law remedies specific to IP

Do special remedies exist under your competition laws that are specific to IP matters?

No remedies specific to IP matters exist under Romanian Competition Law.

29 Remedies and sanctions

What competition remedies or sanctions have been imposed in the IP context?

Remedies usually include granting trademark licences or eliminating from the scope of the acquisition competing trademarks held by the seller of assets and IP rights, alleviating the concerns regarding the strengthening of the buyer’s market power and allowing the seller to remain a competitor on the market.