On May 9, 2010 a new, long awaited, trademark has entered into force in Romania. The process for the adoption of this new law started back in 2006 and it was initially intended to come into force in 2007 once Romania joined the EU. Due to some political disputes that exceeded the object of the law itself, the law was adopted by the Romanian Parliament in March 2010. The new law brings a number of important changes in the registration procedure as well as in the enforcement area and also deals with the new status of Romania as a member of the European Union.
Exclusion of the ex-officio examination for relative grounds of refusal
Perhaps the most important change brought by the new legislation is the exclusion of the ex-officio examination for relative grounds of refusal. This, in turn, implies a lot of changes in the registration procedure.
According to the new law, the trademark application is published for oppositions within 7 days from the application date. The opposition period is of 2 months (as opposed to 3 months in the previous legislation). Within the same period of time, observations based on absolute grounds of refusal can also be submitted. The oppositions are communicated to the applicant who has a 30-day period to submit its reply.
The oppositions are examined by an Opposition Commission, which will issue a decision compulsory for the examination process.
The examination process (until a first decision is issued) must not take more then 6 months. The new law also provides for the possibility to request an expedite procedure (against the payment of a surtax) that will bring the examination procedure down to a maximum of 3 months. All the details regarding the particulars of the procedure are to be laid down by the Implementing Regulations that are not available at the time of this article.
Community exhaustion of trademark rights
The previous legislation provided for international exhaustion of trademark rights for the national and international trademarks valid in Romania. The new trademark law provided for Community exhaustion of trademark rights, in an attempt to eliminate any discrimination between the Community Trademark owners and the owners of national and international trademarks valid in Romania.
Since Romania is one of the border states of the European Union, this modification in legislation is bound to have an impact on the parallel imports that have been entering Romania and subsequently the rest of the European Union in the last few years.
Community trademarks. Community trademark courts.
The new law dedicated an entire chapter to the Community Trademarks, the scope of their protection and the conflicts with national rights. All these provisions are taken from the CTM Regulations and their presence in the national law was not particularly necessary.
However, one provision that was absolutely necessary and was long awaited by practitioners was the appointment of a Community Trademark court. The law solved this lack in the Romanian legislation by appointing the Bucharest Municipal Court as the only Community Trademark court in Romania. This was a logical decision since this court is the most experienced court in the country in dealing with intellectual property matters and is the Romanian court that deals with all the trademark cancellation actions and all the appeals against the decisions of the Romanian PTO.
Provisional protection granted for the trademark application
According to the previous legislation a trademark enjoys provisional protection subject to registration once the trademark is published for oppositions after the examination procedure is completed.
The new law presents a different approach to this issue, and provides for a provisional protection for the trademark application from its first publication (7 days from the application date) before any examination is performed (not even the examination for absolute grounds of refusal).
Practically, the new law grants a provisional protection to the trademark application, subject to registration within a week from the application date. How exactly will this work in practice, remains to be seen, with a lot of problems being foreseen for, at least, the fist few months after the new law comes into force.
Wider protection against counterfeiting and infringement
The new legislation responded to the requests of practitioners, police officers and prosecutors alike and provided for a wider incrimination of counterfeiting and infringement.
According to the previous legislation, counterfeiting was considered a crime only if it was proved that the products were placed on the market by the defended. This sometimes was an issue when the products were seized in one’s house or car, or in a truck or container in customs.
This problem is eliminated by the new law, which goes so far as to incriminating the mere possession with the intent of selling of counterfeited products.
The law also provides for the possibility of a considerable criminal fine being imposed as an alternative to imprisonment (up to 40.000 EUR as opposed to a maximum of 400 EUR in the previous legislation).
These new provisions promise to make this new law a much more effective anti-counterfeiting tool at the disposal of trademark owners, police and prosecutors alike.
Transitory provisions
All the trademark applications still under examination will follow the procedure set forth by the new law. This includes all the trademark applications that have been provisionally refused (based on relative grounds of refusal) as long as the decision has not become final. In these cases the provisional refusal will be withdrawn and the trademark application will be published for oppositions.
The Implementing Regulations are due to be adopted within 3 months form the date the law comes into force.
Update – Implementing Regulations
The long awaited Implementing Regulations have been published and entered into force more than six months after the new Trademark Law, namely on December 03, 2010. The Implementing Regulations are expected to clarify some of the problems caused by some of the rather controversial provisions of the new Trademark Law.
The most important provisions of the Implementing Regulations are the ones regarding the opposition procedure. The new law has brought what was intended to be a very expedite registration procedure. However, it was a concern that this fast pace will be accomplished at the expense of the prior right holders, who will have a limited period of time to file oppositions. The Implementing Regulations provide for an additional two months to the two months opposition period in which the opponent can substantiate the opposition and file documents in support. This provision does not prolong the opposition deadline, which is still two months form the publication date of the application, but provided the opponent with additional time necessary in order to submit all the relevant arguments and documents in support of his opposition. The extension of time is granted only subject to the payment of an official fee.
For equity reasons, the 30 days period granted for the applicant to respond to the opposition can also be prolonged with and additional 30 days, in order to provide the applicant with sufficient time to prepare its defense in more complicated cases. The extension of time is not subject to any additional official fees.
In order to complete the new trademark system, the Government must also modify the legislation regarding the official fees, which is set by a different law.
By Dragosh Marginean
Dragosh Marginean, 32, has been working in the Intellectual Property field since 2000. Graduated from Law School in 2002. In 2003, he co-founded the fastest-growing IP firm in Romania, Ratza & ratza, which provides a full range of intellectual property prosecution and litigation services. Currently, Mr. Dragosh Marginean is primarily involved in trademark and patent litigation work, but also dedicates time to law reforms as well as writing articles on various IP topics.
