Trademark system in Romania:

 

 

Introduction:

Language: Romanian     

Capital: Bucharest

Area: 238,391 km2

Population: 19,511,000 (2015)

Currency: Romanian leu (RON)

Religions: Eastern Orthodoxe is the most represented religion (81%)

Geographical situation: In Southeastern Europe It borders the Black Sea, Bulgaria, Ukraine, Hungary, Serbia, and Moldova.

 

International treaty membership:

 

Singapore Treaty on the Law of Trademarks (March 16, 2009)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (July 28, 1998)

Trademark Law Treaty (July 28, 1998)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (June 30, 1998)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (June 30, 1998)

Convention Establishing the World Intellectual Property Organization (April 26, 1970)

Madrid Agreement Concerning the International Registration of Marks (October 6, 1920)

Paris Convention for the Protection of Industrial Property (October 6, 1920)

 

Legislation:

 

Law No. 84/1998 on Trademarks and Geographical Indications (2010)

 

Government Institutions:

 

Romanian Copyright Office (ORDA)

 

Type of trademark:

Trademarks may consist of any sign capable of being represented graphically, such as: words, including personal names, designs, letters, numerals, figurative elements, three-dimensional shapes and, particularly, the shape of goods or of packaging thereof, colors, combinations of colors, holograms, acoustic signals, as well as any combination thereof, provided that such signs are capable of distinguishing the goods or services of one enterprise from those of other enterprises.

Romania also recognizes Well-known marks, service marks, collective marks and certification marks.

 

Ground for refusal:

 

As most of trademark system worldwide, the Romanian system has absolute and relative ground for refusal.

Absolute ground: Registration shall be refused or, if registered, shall be deemed to be cancelled, for the following absolute grounds:

-  trademarks which are devoid of any distinctive character;

-  trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;

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

-  trademarks which consist exclusively of the shape of the product which results from the nature of the goods themselves or which is necessary to obtain a technical result or which gives substantial value to the goods;

-  trademarks which are liable to mislead the public as to the geographical origin, the quality or nature of the goods or service;

-  trademarks which contain a geographical indication or which consist thereof, for goods which do not originate on the designated territory if the use of such indication is liable to mislead the public as to the true place of origin;

-  trademarks which consist of a geographical indication identifying wines or spirits which do not originate in the place indicated or which comprise such indication;

-  trademarks contrary to public policy or to accepted principles of morality;

-  trademarks which contain, without the consent of the owner, the likeness or surname of a person of repute in Romania;

-  trademarks which contain, without the permission of the competent authorities, reproductions or imitations of armorial bearings, flags, State emblems, signs, official hallmarks of control and warranty, coats of arms belonging to countries of the Union.

-  trademarks which contain, without the permission of the competent authorities, reproductions or imitations of armorial bearings, flags, other emblems, abbreviations, initials or denominations which belong to international intergovernmental organizations to which one or more countries of the Union are party.

-  trademarks which contain signs of high symbolic value, in particular religious symbols;

Relative ground can also be taken in consideration if there is an opposition on the trademark registration: registration of a trademark shall also be refused or shall be susceptible of being cancelled, as the case may be, for the following relative grounds: -  if it is identical with an earlier trademark, and the goods and services for which registration is applied or the trademark has been registered are identical with the goods and services for which the earlier trademark is protected;  

-  if, because of its identity with or similarity to the earlier trademark and because of identity or similarity of the goods or services covered by the two trademarks, there exists a likelihood of confusion in the public perception, the likelihood of association with the earlier trademark included.

 

 

Application content:

 

Foreign applicants only need a local agent if the foreign person is not from the EU or the European Economic Area. Foreigners from the EU or EEA can act before the Romanian Patent Office directly only for filing of a trademark application which must be in Romanian language.

The application for trademark registration shall contain the following:

-  an express request for the registration of a trademark:

-  information identifying the applicant and, where appropriate, the representative; -  a sufficiently clear graphic representation of the trademark whose registration is applied for;

-  the list of goods/services in respect of which the trademark registration is applied for;

-  proof of payment of the trademark registration application filing and publishing fee.

The date of the regular filing shall be that on which the application for registration of a trademark containing all elements requested has been filed with OSIM.

 

Application process:

 

The Romanian Office in charge of reviewing applications (OSIM) shall, within one month after receiving application, examine whether all the elements requested for application were provided. In case elements are missing, OSIM shall notify the applicant which will have 3 months to correct his application.

Once the application is accepted, it shall be publish electronically within 7 days of the date of filing.

Within 2 month from the publication, any interested persons can make an opposition to the registration of the mark if they have an earlier right. If there’s any opposition the applicant will be allowed to make observation within 30 days from the notification day. Boards of OSIM will the admission or rejection of the opposition.

From the date of publication, the OSIM has 6 months to proceed to a substantive examination of the application based on absolutes and relatives grounds for refusal, and accept or reject, totally or partially the application.

If OSIM accept the registration of trademark, the decision shall be published in the Official Industrial Property Bulletin, in electronic format; within 2 months as from the date of the registration decision and OSIM shall issue the trademark registration certificate only after payment of publication and issuance fee.

 

Refusal:

 

Where a non-essential element of the trademark is devoid of distinctive character and if said element could give rise to doubts as to the scope of trademark protection, OSIM shall request that the applicant states, within two mounts of notification date, that he disclaims any exclusive right on said element. The statement shall be published together with the registered trademark.

If the application does not satisfy the conditions prescribed for registration of a trademark, OSIM shall notify the applicant thereof and shall afford him a period of 3 months for submitting his observations or withdrawing his application. Such period may be extended for another 3-month period upon request by the applicant accompanied by payment of the prescribed fee.

OSIM decisions in respect of trademark registration applications may be appealed from with the Office by any concerned person, within 30 days of communication or, as appropriate, of publication of trademark registration on payment of the prescribed fee.

Appeals lodged in accordance with the paragraphs upon shall be settled by a Board of Appeal of OSIM.

The reasoned decision of the Board of Appeal shall be communicated to the parties and may be appealed against to the Law Court of Bucharest within 15 days of communication. Decisions of the Law Court of Bucharest may be appealed from to the Court of Appeal of Bucharest within 15 days of communication.

 

 

Rights of exploitation and related delay:

 

The registration of a trademark shall take effect on the date of the regular filing of the trademark and shall subsist for a period of 10 years. The request for renewal of a registration may be made before expiry of the current term of protection, but not earlier than 3 months prior to expiry of that term, but the fee may be paid within 6 months following the expiry date of the current term of protection, on payment of the prescribed additional fee.

 

The registration of a trademark shall confer on its owner an exclusive right in that trademark. The owner of the trademark may request the competent judicial body to prohibit third parties not having his consent from using in the course of trade:

 

-  any sign which is identical with the trademark, in respect of goods or services which are identical with those for which the trademark is registered

-  any sign where, because of its identity with or similarity to the trademark and because of the identity or similarity of the goods or services on which the sign is affixed, there exists a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trademark

-  any sign which is identical with or similar to the trademark, in respect of goods or services which are not similar to those for which the trademark is registered, where the latter has a reputation in Romania and where use of that sign without due cause could take unfair advantage of the distinctive character or the reputation of the trademark.

Rights in a trademark may be transferred by assignment or license, or by succession.

 

Transfer and conditions:

 

Assignment shall be effected in writing and signed by the parties to the contract, on pain of nullity.

Assignment of rights in a trademark may be effected for all or a part of the goods or services in respect of which the trademark is registered; an assignment, even in part, may not limit use of the trademark for the goods or services to which it applies to a given territory.

Transfer of the whole of the patrimony of the trademark owner shall include transfer of the rights in the trademark. The transfer of certain elements of the owner's patrimony shall not affect his capacity as owner of the right in the trademark.

The request for recordal of the assignment shall be accompanied by the document attesting to the change of ownership of the trademark, but OSIM shall not enter the assignment in the Register where it is obvious that public is misled as to the nature, quality or geographic origin of the goods or services in respect of which the trademark is registered, unless the assignee accepts to limit the trademark transfer to the goods and services in respect of which it is not likely to mislead.

If there are no risks of misleading the public and upon request by person concerned and on payment of the prescribed fee, OSIM shall enter the assignment in the Trademark Register and publish it in the Official Industrial Property Bulletin. Assignment may be invoked against third parties as from the date of its publication.

 

Certification:

 

After entering the registration in the Trademark Register, OSIM shall issue the trademark registration certificate.

 

Withdrawal and cancellation:

 

The applicant may at any time withdrawn his application for registration or restrict the list of goods or services. Where the trademark has already been published, withdrawal or restriction shall be published in the Official Industrial Property Bulletin.

The owner may surrender his trademark in respect of some or all of the goods or services for which it is registered.

Furthermore, there are other grounds for the revocation of protection of a trademark; those shall be requested before the Law Court of Budapest:

-  if, within a continuous period of 5 years, as from the date of its entry in the Trademark Register, the trademark has not been put to genuine use on the territory of Romania in connection with the goods or services in respect of which it is registered or if such use has been suspended for a continuous period of 5 years, and there are no proper reasons for non-use;

-  if, after the date of registration, the trademark has become, in consequence of acts or inactivity of the owner, the common name in the trade for a product or service in respect of which it is registered;

-  if, after the date of registration and in consequence of the use made of it by the owner or with his consent, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services in respect of which it is registered;

The protection of the mark can also be cancelled if it meets absolutes grounds for refusal, if the application was made in bad faith, or if it infringes the right of a person.

The time limit for requesting cancellation shall be within 5 years after the registration of the mark.

 

Customs protection:

 

The intervention of the customs authorities shall be requested by the right holder by filing a request with the General Customs Directorate mentioning his capacity in relation to the intellectual property right, thereby requesting the suspension of the customs clearance and the detention of the goods liable to infringe the protected right.

Within 10 days from registering the request, the General Customs Directorate shall notify the requestor in writing, the approval or, where appropriate, the necessity of submitting additional documents and information.

On account of the effective request the customs authorities shall suspend the customs clearance operation and shall detain the goods liable to infringe an intellectual property right, and shall communicate this measure to both the requestor and the declarant, in writing.

The goods seized may have the following destination:

-  destruction, according to the legal standards in force;

-  to humanitarian, non-profitable association, but those shall bind themselves not to sell or transfer the goods.

 

Sources:

WIPO.int:

  • Law No. 344/2005 on Specific Measures for the Enforcement of Intellectual Property Rights in Customs Clearance Operations
  • Law No. 84/1998 on Trademarks and Geographical Indications (2010)

 

Vincent Lagier

 

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眾律國際法律/專利商標事務所

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