Contributed By Milcev Burbea
Romanian trade-mark law (Law No 84/1998 on trade marks and geographical indications) allows for the registration of different types of trade marks.
According to the present provisions (which will soon be harmonised with Directive 2015/2436 and the graphic representation condition will be excluded), any sign that is capable of graphic representation may, under certain conditions, constitute the object of a trade-mark registration. Considering their constitutive elements, trade marks may consist of word marks, design (device) marks, three-dimensional marks and audible marks.
Along with individual trade marks, the Romanian trade-mark law regulates the possibility to register certification marks or collective marks.
A certification mark is a mark indicating that the goods or services for which it is used are certified by the owner as to the quality, material, method of manufacturing goods or mode of providing services, accuracy or other characteristics. A collective mark serves to distinguish the goods or services of the members of an association from goods or services belonging to other persons.
In Romania, rights over a trade mark are acquired by registering that trade mark with the Romanian State Office for Inventions and Trademarks (“Romanian PTO”).
By way of exception, notorious trade marks in Romania are protected irrespective of any formalities and registration is not necessary; in this respect, the duration and extent of using the mark represent a criterion when assessing the notorious character of a trade mark.
The Romanian trade-mark law provides for general standards for registering trade marks, irrespective of the type of mark.
In Romania, the trade-mark register is managed by the Romanian State Office for Inventions and Trademarks and is publicly available online. The trade-mark register comprises all trade-mark applications and registered trade marks, as well as trade marks whose registration was rejected or cancelled. It provides information on the status of the trade mark, the details of the trade mark and the details of the owner and representative.
The Romanian legal system does not provide for different types of registers (such as principal and supplemental) in respect to trade marks.
Although not mandatory, it is highly recommended that applicants undertake a preliminary search for prior trade marks before applying to register a mark. In order to identify similar trade marks registered in the territory of Romania, sources that should be checked include:
A further search on the internet and with the Trade Name Office is also recommended in order to identify other signs that might be protected. Notorious unregistered trade marks should also be considered.
In order to be the subject of trade-mark registration, a sign must be capable of being represented graphically, have distinctive character, be available and licit. The distinctiveness of a sign is measured by its capacity to distinguish the goods and services of an enterprise from the goods and services of another enterprise. For a sign to be available, such sign must not be owned by other persons (as a trade mark or other protected sign) and the registration of such sign must not harm third parties’ rights. A sign is licit when it does not contravene the laws and regulations. As for the condition for the trade mark to be graphically represented, this should be interpreted in a broader manner, in the sense that the trade mark may be objectively perceived in the same way.
In order to register a sign that complies with the legal requirements mentioned above, the applicant shall file with the Romanian PTO the request for trade-mark registration, drawn up in the Romanian language and containing:
In addition, the applicant has to have proof of payment of the trade-mark registration application filing and publishing fee.
Under the Romanian trade-mark law, any individual person or legal entity may acquire rights by registering trade marks. Co-ownership over trade marks is permitted. Depending on the type of the trade mark, particular aspects may arise in connection to the owner. For example, collective trade marks may be registered only by associations of manufacturers, producers, suppliers of services or traders. Certification marks may be registered by a legal entity with statutory powers to control the goods or services as to the elements indicated by law.
Foreign natural persons or legal entities having their residence or place of business outside the territory of Romania shall also enjoy the provisions of the Romanian trade-mark law, in accordance with the international conventions on trade marks and geographical indications to which Romania is a party.
Romanian trade-mark legislation states that trade marks may consist of any sign capable of being represented graphically (as mentioned, soon the condition of graphic representation will be excluded due to harmonisation with Directive 2015/2436), such as words, including personal names, designs, letters, numerals, figurative elements, three-dimensional shapes and, particularly, the shape of goods or of packaging thereof, colours, combinations of colours, holograms, audible signals, as well as any combination thereof.
The list provided by law is exemplificative, meaning that other signs may also be registered as trade marks provided that such signs comply with the conditions set in this regard, ie to have distinctive character, to be available, licit and capable of being represented graphically.
Other distinctive signs are recognised in the Romanian legal system, besides trade marks, due to their common role to identify economic agents and their goods or services, such as company names and emblems.
Company names and emblems are protected by registration within the Trade Registry, as per Law No 26/1990 on the Trade Registry. The company name is defined as the name under which a trader conducts its activity, while the emblem is defined as the sign or name that distinguishes a trader from another trader.
At the point of registration, the company name and emblem must be distinctive and available; the Trade Registry verifies availability in the territory of Romania. For different types of companies, the relevant legislation establishes specific rules in connection with the company name.
Additionally, while a company name is mandatory for all traders, choosing an emblem is optional, similarly to a trade-mark registration.
The first step when registering a trade mark in Romania consists of filing the trade-mark application with the Romanian PTO, which shall comprise the specific request to register the trade mark, the identification details of the applicant, the list of goods and services in respect of which the trade-mark registration is applied and a sufficiently clear graphic representation of the trade mark whose registration is applied for. The application should also be followed by proof of payment of the official corresponding fees and, if necessary, by the Power of Attorney.
The trade-mark application is electronically published in the Official Industrial Property Bulletin within seven days from the date of filing. Within two months from the publication date, any interested person can oppose the registration of the trade mark based on the absolute grounds of refusal (by way of filing ‘observations’) or based on the relative grounds of refusal (by way of filing an ‘opposition’).
If no opposition/observation is filed, within six months following publication the Romanian PTO shall carry out a substantive examination of the trade-mark application and make the decision to accept the trade mark registration, wholly or in part, or to refuse registration.
If, after the examination, the Romanian PTO decides to accept the trade-mark registration, the trade mark is published for the second time and third parties have 30 days to file an appeal against the decision. After the expiry of the 30 days, in the absence of such appeal, the decision of the Romanian PTO accepting the trade-mark registration becomes final and the corresponding registration certificate is issued.
If, after the examination, the Romanian PTO rejects the registration on absolute grounds, the applicant may respond to the provisional refusal notice within three months. After assessing the response of the applicant, the Romanian PTO shall make a decision.
A decision of rejecting the trade-mark application, on absolute grounds or following to an opposition, may be contested within 30 days in front of the Board of Appeal of the Romanian PTO; further, the decision of the Board of Appeal may be contested in court.
The Romanian system does not require use in commerce of the applied-for mark as a requirement for registration.
The Romanian system does not provide for the possibility for the registration of series marks (only one mark may be requested for registration within a single application); for each mark that resembles another to some respect, the owner must file different trade-mark applications.
In practice, the registration process – starting from the filing date of the application and obtaining the decision of the Romanian Trademark Office regarding registration – takes around eight to ten months, assuming no incidents, such as opposition or provisional refusals, occur.
The applicant does not need representation to initiate the registration procedure by filing the application, but may choose to do so. The Romanian trade-mark law expressly provides that applicants not having either their domicile or their place of business or any real and effective industrial or commercial establishment in the territory of the European Union or the European Economic Area shall be compelled to be represented by a representative, except for the procedure of filing the application for trade-mark registration.
The official fee for registering one word mark in one class is EUR200, comprising fees for filing and publishing the application, examination by the Romanian Trademark Office and issuing the registration certificate. Attorney fees for the same may be comparable with the official fees.
The Romanian trade-mark law expressly provides the absolute grounds, based on which the Romanian PTO shall refuse the registration, which are:
• signs that cannot constitute a trade mark;
• trade marks that are devoid of any distinctive character;
• trade marks that consist exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
• trademarks that consist exclusively of signs or indications that 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;
If the Romanian PTO raises an objection based on absolute grounds of refusals, a notice of provisional refusal shall be issued and the applicant is given a three-month term to respond to that objection; thereafter, the Romanian PTO will issue a decision that may be contested, in which case see Q11 above.
Depending on the grounds of the refusal, different approaches may be considered; for example, if the mark applied for is rejected as being devoid of any distinctive character, the applicant may claim acquired distinctiveness.
The Romanian trade-mark office does not consider ex officio the existence of prior rights in its examination of an application for registration. Only in the case that the holder of the prior rights invokes such rights by way of filing an opposition or appeal, the Romanian PTO shall consider those when examining a trade-mark application.
In this case, the opponent may invoke an earlier trade mark, meaning a trade mark with a date of application for registration earlier than the date of application for registration of the trade mark concerned; earlier trade marks may refer to the European Union trade mark, trade marks registered in Romania or trade marks registered under international agreements having effect in Romania, but also trade marks that are well-known in Romania.
Other rights, other than those arising from a trade mark, may be opposed, such as rights arising from a sign prior-used in commercial activity, if the used sign confers to its owner the right to prohibit the use of the subsequent trade mark, a right to a name, to an image, a copyright, an industrial property right, etc.
Third parties may participate during the registration procedure of a trade mark by means of filing an opposition or observations.
Oppositions may be filed in term of two months from the publication of the trade mark registration in the Official Gazette of Industrial Property by any interested third parties; this is the case, for example, of an owner of a previous trade mark or any intellectual property rights, the holder of a right to a name or of a protected geographical indication. The opposition shall be communicated to the applicant, who may respond in writing within 30 days as of the communication date. The opposition shall be settled by a Board within the trade mark Division of the Romanian PTO; the Board will issue a notice of admission or rejection of opposition to be taken into consideration upon substantive examination (after the substantive examination, the Office will make its decision, accepting or rejecting the registration).
Within the same term of two months from the publication date, any interested third party may submit observations based on the absolute grounds of refusal listed at 1.15 Refusal of the Registration of a Trade Mark above. Unlike the opposition procedure, observations are not communicated to the applicant, except when the Office considers it necessary for the applicant to present its response. Observations will be taken into consideration during the substantive examination.
The applicant may at any time withdraw the application for registration or restrict the list of goods or services. Where the trade mark has already been published, withdrawal or restriction shall also be published in the Official Industrial Property Bulletin.
The application for registration of a trade mark may be modified, at the request of the applicant, only in order to correct the name or address of the applicant or to make other corrections that do not substantially affect the trade mark or extend the list of goods or services. The Romanian trade mark law specifically provides that any modification requested by the applicant prior to registration that substantially affects the trade mark or the list of goods or services shall be the subject of a new application for trade mark registration.
The rights in connection to a trade mark exist as of the date of the regular filing and therefore such rights may be assigned starting from this moment; the date of regular filing shall be the date on which the application for registration of a trade mark containing all elements provided by law has been filed with the Romanian PTO.
Based on the reasoning above, the same solution shall also apply in the case of concluding a licence contract.
In the case of a notice of provisional refusal of the Romanian PTO rejecting a trade mark registration, the applicant is given three months to present its observations. If the Romanian PTO maintains its decision after the applicant’s response, a decision of rejection shall be issued. Such decision may be contested with the Board of Appeal within the Romanian PTO. Subsequently, the decision of the Board of Appeal of the Romanian trade-mark Office may be contested in court, at the Bucharest Tribunal. The decision of the Bucharest Tribunal may be further appealed with the Bucharest Court of Appeal. The decision of the Bucharest Court of Appeal is final.
Romanian trademark legislation does not require that applicants should use the mark in commerce before the registration.
The Romanian trademark law provides allows for the division of an initial trademark application that relates to more than one good or service into two or more applications, and the goods and services may be divided over the divisional applications.
The request for division of an initial application is conditional upon the payment of an official fee and may be made during the examination procedure of the trademark by the Romanian Trademark Office, up to such time as a decision is taken on registration, as well as during the procedure before the Board of Appeal of the Romanian PTO or during any other procedure of appeal against the decision to register the trademark.
The divisional applications shall maintain the filing date of the initial application and shall enjoy any priority right, if the case may be.
In Romania, the term of protection for registered trademark is ten years as of the date of the regular filing of the trademark. The registration of a trademark may be renewed at the end of each ten-year period.
To this end, the owner must request the renewal and pay the corresponding fees. The request for renewal must contain certain elements and may be made before the expiry of the current term of protection, but not earlier than three months prior to expiry of that term. The fee for the renewal shall be due on the date of the request for renewal; in failure of such, the fee may also be paid within six months following the expiry date, on payment of the prescribed additional fee.
The owner is permitted to request renewal for only a part of the goods and services; in this case, the owner is requested to list the goods and/or services for which renewal is sought.
Trademark rights shall be considered exhausted at the moment when the goods where put on the market in the European Union and the European Economic Area, under said trademark, by the owner himself or with his consent, meaning that the owner shall not be entitled to prohibit other persons the use thereof. However, this rule shall not apply if there are legitimate reasons for the owner to oppose further commercialisation of the goods, particularly where the condition of the goods is changed or impaired after they have been put on the market.
Romania is party to both the Madrid Agreement (since 1920) and Madrid Protocol (since 1998). There are no particular requirements for international registrations and the provisions of the Romanian trade-mark law shall apply also to international registrations made under the Madrid Agreement or the Protocol to the Agreement.
If the applicant files the trade-mark application inappropriately, disregarding the minimum formal requirements, the Romanian PTO shall notify the applicant of the irregularities and grant him a period of three months to correct them.
In this case, the applicant may request the amendment/correction of the application in order to correct the name or address of the applicant or to make other corrections that do not substantially affect the trade mark or that do not extend the list of goods or services.
Under the Romanian trade-mark law, a design mark may be updated or refreshed as long as the request refers to non-essential amendments to certain elements of the trade mark, on condition that the modifications do not affect the distinctive character of the trade mark. Otherwise, the holder needs to file a new trade-mark application for the updated or refreshed mark, in case the modifications affect the distinctive character of the trade mark.
The request to make non-essential amendments may be addressed to the Romanian PTO any time during the period of protection. The amendments shall be entered within the Trademark Registry and the trade mark as amended will be published by the Romanian PTO.
The Romanian trade-mark law does not provide that owners should use a symbol to denote that a mark is registered. However, in practice, owners often do apply commonly used symbols such as ® or to show that their mark is protected.
The assignment of a trade mark has to be in writing, either by way of a contract or a simplified form of assignment, for the purpose of being filed to the Romanian PTO. The assignment is valid between the parties from the conclusion of the contract, while the rights of third parties can be invoked only after the publication of the assignment in the Official Bulletin of Industrial Property. The approval of the Romanian PTO is not required for the validity of the assignment of a trade mark. The Romanian PTO just registers the assignments, and does not approve them.
Law No 84/1998 on trade marks and geographical indications provides some particular restrictions for the assignments, including that:
The application for the registration of an assignment can be filed at the Romanian PTO by the holder or the person who has become the new owner of the registered trade mark and must contain:
If the change of the holder results from an assignment contract, the recordal application shall be accompanied by the original contract or a certified copy of the contract, or at least an extract from the contract to reflect the change of the holder, in legalised copy. Alternatively, a simplified form of assignment can be filed, which contains all the essential aspects of the assignment, for the purpose of being filed to the Romanian PTO. If the original documents are in other languages, they must be translated into the Romanian language by a certified translator. When the change of the holder results from a merger, the application for the assignment registration shall be accompanied by the legalised copy of the merger act.
When the change of the holder results from other reasons (a court decision, inheritance, forced execution etc), the application shall be accompanied by appropriate supporting documents in legalised copy.
A single application for assignment recordal is sufficient in the case of two or more trade marks, provided that for all of them there is only one new holder.
When the change of the owner does not refer to all the products/services of the registered trade mark, the Romanian PTO creates a distinct record that mentions the products/services for which the assignment is made.
The Romanian PTO registers the assignment in the Trademark Register and publishes it in the Official Bulletin. The assignment is opposable to third parties from the date of its publication.
During the gap between the assignment taking place and its registration at the Romanian PTO, the assignee cannot rely on the rights deriving from the trade-mark registration in the case of third parties.
Trade-mark rights may be transferred as a consequence of the forced execution of the debtor, under the terms of the law. In addition, a trade mark can be given as a security or be subject to rights in rem.
Under Romanian law, licensing is possible only for registered trade marks, not for trade-mark applications.
The licensing of a trade mark has to be in writing, stating the products or services for which it applies, the exclusive or non-exclusive character of the licensing, the duration of the licence, if it applies to the whole territory of Romania or to a part of it as well as other aspects/requirements of the trade-mark holder concerning the use of its trade mark. The licensing contract is valid even in the absence of its registration with the Romanian PTO and it can be invoked in front of third parties from the moment of its communication to the concerned party.
Romanian law states that licences can be exclusive or non-exclusive.
An application for the registration of a licence can be filed at the Romanian PTO by the holder or beneficiary of the licence and must contain:
If the documentation requested by the Romanian PTO is not complete, the Office grants a deadline of three months to remedy the deficiencies. If the deficiencies are not remedied, the Romanian PTO can decide to reject the application. When the documentation is complete, the licence is registered in the trade-mark Register.
A single recordal application may be filed for two or more licences, provided that the licensee is the same for each of them, and the number of each trade mark is indicated in the application, together with the payment of the legal fee for the licence paid for each trade mark separately.
The licence is formally opposable to third parties from the date of its publication in the Official Bulletin of Industrial Property. The licence can, however, be opposable to a third party from the date of the communication of the licence to the concerned party.
Licence filing with the Romanian PTO is not a prerequisite for the use of a trade mark by the licensee and the use by an unregistered licensee is considered the equivalent of an act of use made by the holder during the procedures that concern the acquisition, maintenance or validity of a trade mark.
The lack of registration of a licence with the Romanian PTO does not affect:
An impediment against the granting of a perpetual licence is the expiry of the duration of validity of the trade mark. A licence contract cannot be concluded for a period longer than the validity of the trade mark in question.
There are no additional requirements to be met for a licence or assignment, according to Romanian law. The price is not a mandatory requirement. Licences and assignments can also be concluded for free.
The legal basis for submitting an opposition is provided by the Romanian law in Article 6 of Law No 84/1998, which regulates the relative grounds for refusal of a trade-mark registration.
A trade mark is susceptible to being refused for registration if it is identical to an earlier trade mark and the goods/services for which the trade mark was applied for or registered are the same as those for which the earlier trade mark is registered. A trade mark can be cancelled, for reasons of identity or similarity with the earlier trade mark or for the identity or similarity of the products/services for which the trade marks are registered, as it creates a risk of confusion, including the risk of association with the earlier mark.
The opposition deadline is two months from the date of publication of the trade mark application. Under the Romanian legislation, one cannot request an extension of time to file an opposition. The opponent may, however, request from the Romanian PTO an additional time limit of two months for the submission of additional documents/arguments, with the payment of a legal fee.
Any interested person may file an opposition for relative reasons of refusal, within two months of the publication of the trade-mark application.
For natural or legal persons not having their address or registered office in Romania, in the European Union or in the European Economic Area, representation before the Romanian PTO is mandatory.
The Romanian PTO’s fees for filling an opposition depend on the number of classes for which a trade mark is filed. The official fee for the opposition for the first class is EUR60, while the fee for each supplemental class is EUR30.
Average attorney fees for opposition range from EUR450 to EUR650 for an opposition procedure where an average number of three classes are involved.
Any interested person may, within two months from the date of publication, oppose the trade-mark application on any of the relative grounds for refusal set out in Article 6 of Law No 84/1998, republished.
During opposition proceedings, the commission examines the visual, aural and conceptual similarity of the signs, the similarity of the goods and services for which the earlier mark is sought and the likelihood of confusion, including the likelihood of association.
In opposition proceedings, arguments relating to absolute grounds for refusal are not admissible. Therefore, the opposition and the observations of third parties cannot be the subject of the same Romanian PTO notification.
The notice of opposition must contain elements identifying the trade mark against which the opposition is filed (record number, name of trade mark, name of the applicant, list of goods and/or services), the indication of the trade mark or the prior acquired right on which the opponent based its opposition, the goods and/or services for which the opposing trade mark was registered, statements relating to the quality and interest of the opposing party, a detailed presentation of the reasons on which the opposition is filed, the identification data of the professional representative, etc.
Upon the request of the trade-mark applicant, the holder of the opposing trade mark must prove that (a) the earlier mark was the subject of an effective use in the territory of Romania for the goods and services for which it was registered, during a period of five years preceding the date of publication of the opposing trade mark application; or (b) there are justified reasons for non-use of the mark on which the opposition is based.
If the earlier trade-mark’s holder does not prove its use within 30 days of the Romanian PTO’s notification, the opposition shall be rejected. Proof of use can consist of packaging, labels, catalogues, invoices, photographs, media appearances, written statements, and so on.
The trade mark applicant may submit his or her point of view within 30 days of notification of opposition by the Romanian PTO.
The opposition is settled by an opposition commission consisting of three specialists appointed by the head of the trade-mark service, one of whom will be the examiner of the trade-mark application. Opposition proceedings are only in writing; there is no public hearing in this procedure. The opposition commission issues an opinion on the admission or rejection of the opposition, in whole or in part, which is further binding during the substantive examination of the trade mark and will be included in the Romanian PTO decision admitting or refusing the registration of the trade mark in question.
If the trade mark is admitted, it is registered in the trade-mark register and the Romanian PTO issues the trade-mark certificate, as long as the publication and release fee is paid. The Romanian trade-mark register is public.
After the opposition proceeding, if one of the parties considers it received a unsatisfactory decision regarding the trade-mark registration from the Romanian PTO, it can contest the decision within 30 days from the notification.
The contestation is the object of an appeal judged inside the Romanian PTO by a special Board of Appeal, consisting of three specialists having a juridical background. Appeal proceedings take place in public hearings. The adverse party can file observations on the appeal.
The decision of the Romanian PTO in the appeal stage can be further contested in front of the Bucharest Tribunal within 30 days after the communication of the decision.
The decision of the Bucharest Tribunal can further be contested in front of the Bucharest Court of Appeal, within 30 days after the communication. The decision of the Bucharest Court of Appeal on the case is final.
The final decision of the court regarding the registration of the trade mark will be communicated to the Romanian PTO by the interested person.
In order to pursue infringement, the owner of the trade mark can opt between two actions – civil and criminal.
Under the civil route, the owner of a trade mark or a sign protected under the trade mark law can file before the competent courts a counterfeit action claiming the violation of its rights and damages.
In the case that the actual infringement through use is doubled by the registration of a trade mark, one can pursue through the same action both the cancellation of the opponent’s trade marks and the establishment of infringement acts by the use. In other words, a cancellation action and a counterfeit action can be filed at the same time, without any requirement to give priority to a certain order.
Additionally, when the infringing sign does not benefit from protection (through the registration as a trade mark or other means), a trade-mark owner can also file a preliminary injunction action by which the infringer is ordered by the court on a temporary basis to cease the use of the sign until a final decision is made on the infringement of the trade mark.
The owner of a trade mark may alternatively choose to file a criminal complaint before the police authorities. Although the impact on the infringer may be greater, the procedure in criminal complaints may prove to be precarious, and is more suited to cases of piracy than cases of counterfeit, where the civil route appears to be more reliable.
The competent court for intellectual property matters is generally the Bucharest Tribunal. Its competence is expressly provided in cancellation actions; however, as a general practice, infringement actions are also inferred to the Bucharest Court, due to the specialism of the judges. If the trade-mark owner decides to initiate infringement proceedings before other courts, under compliance with territorial jurisdiction rules these will be examined as any other proceedings carried before the Bucharest Court.
The Romanian trade-mark office does not hold any authority on infringement actions, which is solely the reserve of the justice courts.
Declaratory judgment proceedings are possible under Romanian law in intellectual property matters. Although trade mark-specific legal provisions do not expressly provide for the possibility to file an action for declaration of non-infringement, based on the common civil procedure code procedure such actions are admissible (for example, further to receiving a cease-and-desist notification, in order to clarify any uncertainty with respect to a potential infringement).
In addition, claiming within another action for the court to establish a certain situation (for example, the notorious character of a trade mark) is possible and will be taken into account for the future in other disputes as long as the decision establishing a certain circumstance is final. In this case there will be the same effects as in the case of a declaratory judgment from the perspective of their binding character, but this time as a result of the res judicata principles.
Trade-mark matters are heard in the first instance by the Bucharest Tribunal, by the Bucharest Court of Appeal in the second instance, and by the Supreme Court in the third instance.
However, in criminal proceedings on infringement cases, as a general rule, the competence in the first instance belongs to district courts and in the second instance to the Bucharest Court of Appeal. No third grade of jurisdiction is available in criminal proceedings.
There are no prerequisites for filing a lawsuit in Romania. However, in order to avoid costly and lengthy procedures, a cease-and-desist letter is usually sent to the alleged infringer.
Representation before the public courts is not mandatory in Romania, although it is preferable, considering that intellectual property litigations usually require a high degree of specialisation.
Preliminary injunctions are available under Romanian law. Where the holder of a trade mark makes credible proof that his or her intellectual property right is the subject of an unlawful act, whether current or imminent, and that this act risks causing damage that is difficult to repair, the court may be requested to take preliminary/interim measures.
These measures are ordered by a special form of action called ‘presidential ordinance,’ which is judged on an urgency basis. The trade mark-owner must prove his or her right as well as motivate the urgency of his or her request by presenting the detrimental consequences of allowing the infringer to continue his or her acts.
One important aspect is that these preliminary injunctions cannot be ordered to solve the substantive aspects of the litigation, nor can their execution make the restoration of the situation impossible. For these reasons, interim injunctions are granted under the obligation to seek protection of the trade mark on the merits according to the common procedural law.
If the measures taken in favour of a trade-mark owner are likely to cause damage to the defendant, the court may oblige the plaintiff to post a bond of an amount that shall be appreciated by the court itself, subject to the sanction of the discontinuance of the measures taken.
Romanian law provides several mechanisms to obtain relevant information and evidence from the other party in infringement cases, depending on the stage of the procedure.
As a general rule, for the preservation of evidence, upon the request of a party having presented reasonably available and sufficient evidence elements to support his or her statements, and if said elements are under the control of the opponent, the competent judicial authority may order that such evidence be presented by the opponent. In the case of infringement of protected industrial property rights committed on a commercial scale, the competent judicial authority may also order that banking, financial or commercial documents under the control of the opponent be communicated.
In preliminary injunctions, courts may order the communication of banking, financial or commercial documents or access to information relevant to the case, whereas during a trial concerning the infringement of an industrial property right, the competent judicial authority may order that information on the origin and distribution networks of goods and services infringing a protected industrial property right be provided by the infringer or by any third person.
Trade-mark lawsuits are no different from other lawsuits concerning procedural rules, and neither are the standards for pleading. When filling an action on a trade-mark basis, this should be accompanied by sufficient evidence to sustain it, depending on the particular type of lawsuit. In infringement cases it might be necessary to prove the similarity/imitation, the prejudice, the risk of confusion, in cancellation actions the bad-faith of the alleged infringer or the unjust enrichment, and so on. A different situation may be found in the case of revocation of trade marks where the burden of proof lies with the defendant, despite the fact that the sustaining on the non-use belongs to the plaintiff.
Pleadings can be supplemented with additional arguments and evidence during the first hearing of the trial, depending on its complexity, the necessities and claims that arise from the debates, the judge’s requests, and the arguments and evidence proposed by the adverse party. The final objective is the clarification of all aspects of the case.
The defendant may initiate in response a counterclaim within the same lawsuit in order to invalidate the claims of the plaintiff by requesting, for example, the revocation for non-use of the plaintiff’s trade mark, its cancellation, and/or moral/material damages.
Romanian legal provisions do not contain rules for representative or collective actions.
As in any type of lawsuit, trade mark-owners are required to exercise their rights in accordance with general principles of the law. These impose the obligation to prove a legitimate interest in the action and to act in good faith when exercising one’s rights and obligations. In addition, restrictions imposed by competition law between professionals apply, the parties being restrained from resorting to unfair competition practices.
An action for infringement is carried out by the trade mark-owner against the alleged infringer. The alleged infringer is usually the producer of the goods, but it is common practice to also carry the action against the distributor(s), for opposability reasons.
Unless otherwise stipulated in the licence agreement, the licensee may not file an action for infringement without the consent of the trade mark-owner. An exclusive licensee, however, may bring an action for infringement if, after having notified the trade mark-owner of the counterfeit facts of which he or she is aware, the trade mark-owner has not acted within the time limit requested by the licensee.
In the case of trade-mark applications, the applicant may file an action for infringement only after the publication of the mark. In addition, the applicant may claim damages only for acts of infringement committed subsequently to trade-mark publication. A decision ordering payment of damages shall be enforceable only from the date of trade-mark registration. If the application for registration is refused, the applicant shall not be entitled to damages.
The infringement is established based on the similarity of signs (examined at three levels – visual, phonetic and conceptual) and the risk of confusion between the trade mark and the sign used by the alleged infringer. The degree of distinctiveness of the earlier trade mark is also assessed for determining the risk of confusion.
Even in the case that the products and/or services of the conflicting signs are different, the reputation of the trade mark may be taken into consideration as long as the use without due cause of the alleged infringing sign takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the earlier mark.
All these factors are assessed globally by the judge of the case who will draw his or her conclusions on the existence of the infringement in a motivated reasoning based also on the specifics of the market and the relevant public.
In order to establish the infringement, it must be proved that the defendants use the sign as a trade mark, not in a purely descriptive manner. The legal provisions refer to the use in a commercial activity, but this use should be related to one that would cause likelihood of confusion for the relevant public or that would take unfair advantage of the distinctive character or the reputation of a trade mark. The use of the sign as a trade mark should be well established, especially in the area of services, where a mark is not applied on a certain product and thus the consumer does not engage with the sign directly.
The defendant may invoke in an infringement action several defences, such as a personal right, the exhaustion of the right of the trade mark-owner or the necessity to indicate the intended purpose of a product or service, in particular as accessories or spare parts, so long as the use of the trade mark is made in accordance with honest practice in industrial or commercial matters.
At the same time, the defendant may claim through a counterclaim the cancellation or revocation for non-use of the trade mark allegedly infringed or could claim a lack of interest in the action in the case that the use of a sign has stopped for a certain period of time.
Experts are not generally used by civil courts in establishing infringement, the judge being able to rule on the aspects of similarity and likelihood of confusion, based on his or her own expertise. Market surveys made by independent professionals within the relevant market may be used in infringement cases in order to inform the judge, especially on aspects of reputation, notoriety or distinctive character.
Trade-mark infringement is also considered a criminal offence, punishable by imprisonment of between three months and three years or a fine. Criminal proceedings are usually initiated by the Public Ministry, wherein a prosecutor may carry out investigations ex officio or at the request of a party further to a complaint. The prosecutor may bring the case to the criminal courts, where the trade mark-owner may also become a civil party in order to recover damages resulting from the counterfeit acts. During the investigation the Public Ministry may seize the goods alleged to be counterfeit, conduct interceptions and recordings of the suspects, and even undertake house searches.
Law No 344/2005 on Specific Measures for the Enforcement of Intellectual Property Rights in Customs Clearance Operations, together with Regulation (EU) No 603/2013 governing anti-counterfeiting action by customs authorities, represent the applicable legal provisions related to the regime of counterfeit goods detected in customs. These provisions do not apply to parallel imports.
In order for customs authorities to be able to act at the borders on behalf of the rights-holder and to seize the identified counterfeit goods, the trade mark-owner has to file a custom application for action. The application form will include the list of trade marks and, if possible, information on genuine products (ie, packaging details, characteristics of genuine goods, value of genuine goods etc).
In the case that customs authorities detect goods suspected of infringing the trade marks listed in the application form, they will seize them for ten working days (with the possibility of prolonging for another ten working days), informing the trade mark-owner who has the opportunity to confirm or deny the counterfeit character of the goods. In this situation, the importer is permitted to contest the measure. In such cases, the trade mark owner has to file a civil/criminal action in order for a court to establish that the goods are infringing the rights. If the infringer does not contest the measure, the trade mark-owner can request the destruction of goods (at his or her expense).
Cancellation of the registration of a trade mark may be requested by any interested party on both absolute and relative grounds, as well as (a) if the registration was applied for in bad faith, (b) if the registration infringes a right of personal portrayal or a right to a name, or (c) if the registration infringes earlier rights acquired, such as a protected geographical indication, a protected design, other industrial property rights or copyright.
Revocation of a trade mark may be requested if:
Revocation and cancellation actions may only be brought before civil courts and not before the trade-mark office. The modification of the Romanian trade-mark law that will enter into force in 2019 provides that revocation/cancellation actions will first be brought before the trade-mark office and appeals against the office’s decisions shall be judged by the civil courts.
Cancellation proceedings on bad-faith grounds may be requested at any time during the term of protection of the trade mark, whereas the time limit for requesting cancellation of a registration on all other grounds is five years as from the registration date of the trade mark.
On the other hand, a revocation action can be filed at any time during the term of protection of the trade mark.
According to the legal provisions, a revocation/cancellation action may be brought before the competent courts by any interested party. Aside from this condition, there are no particular admissibility/standing requirements for such proceedings. The Romanian trade-mark office does not initiate cancellation/revocation proceedings.
Partial revocation/cancellation is possible. If grounds for revocation or invalidity exists only for a part of the products or services for which the trade mark has been registered, the revocation or invalidity shall only take effect in respect of those goods or services.
Amendments are possible in cancellation/revocation proceedings only when it involves a restriction of claims made by the plaintiff who may request the cancellation/revocation of a trade mark for fewer products/services than initially intended. No additional claims are to be brought once an action is commenced unless such claims are made before the first hearing, according to the civil procedural rules.
Cancellation and infringement can be heard together, the plaintiff having the possibility to initiate a single action with two heads of claims. In this case, if the court orders the cancellation of the trade mark for infringing a prior right or for bad-faith registration, it shall also make a decision on the infringement. If cancellation is ordered, it is likely that infringement shall be found.
Trade-mark proceedings must comply with the general rules laid down by the civil procedure code or criminal procedure code, depending on the modality in which the trade mark-owner takes action.
Special provisions can be found in the civil procedure code with respect to the preliminary injunctions under a separate chapter, “Provisional measures concerning intellectual property rights.”
Cases are determined by a judge, their number depending on the trial phase. Parties do not have any influence on who is the decision-maker.
Parties can settle the case at any time during civil proceedings. The settlement has to be in writing and will be a part of the court’s decision. There are no other formal mechanisms for settling the case. Settlements can also be concluded during criminal proceedings only with respect to the civil claims part of the criminal proceedings. Should that be the case, the criminal proceedings will continue only with respect to the counterfeiting offence.
In the case that a parallel revocation proceeding is filed, the court can cease the infringement proceedings until the revocation case reaches a final decision. However, the necessity of ceasing the proceedings is assessed on a case-by-case basis (ie, when the court invested with the revocation proceedings could render a decision that is likely to affect the infringement proceedings).
With respect to other trade-mark proceedings, if there is a strong connection between cases, the parties can request the court joins the files and trials them together.
If an infringement of a trade mark is found, the trade mark-owner can request, among others, to the Court that the infringing goods:
At the expense of the infringer, measures that can be carried out include:
If a trade-mark infringement claim is dismissed, the defendant can request the reimbursement of attorney fees. In addition to the above, if the infringement claims were abusive, based on the general provisions of the civil procedure code, the plaintiff can be fined.
There is no difference in the type of remedies for different types of trade mark.
There are no special provisions concerning the appeal stage in trade-mark proceedings.
The appeal implies a full review of the facts of the case as they were established in the appeal filed by the parties, being a devolution procedure.
Usually, appeal proceedings last between four and six months. However, the length depends on the complexity of the case.
Dilution can be considered as grounds for a revocation action, or it can be a good defence in an opposition based on a trade mark that does not benefit anymore from distinctiveness. However, dilution is not recognised by the Romanian legislation as grounds to oppose a trade-mark registration or to prevent the use of a mark but, as mentioned, during the assessment of the case on the merits, dilution is taken into account.
Romania is part of the Paris Convention; therefore, trade marks that are famous outside Romania but not registered in the country benefit from protection by virtue of Article 6b.
Geographical indicators are protected under Law No 84/1988. A geographical indicator is a name serving to identify a product that originates in a country, region or locality of a state, where a certain quality, reputation or other specific characteristics may be essentially attributed to that geographical origin. In order to benefit from protection, geographical indications must be registered at the Romanian PTO.
Certification trade marks benefit from protection under Law No 84/1998. A certification trade mark indicates that the goods or services for which it is used are certified by the owner as to the quality, material, method of manufacturing goods or modality of providing services, accuracy or other characteristics. A certification trade mark may be registered in front of the Romanian PTO by any legal entity that is able to control the goods or services concerning the above mentioned elements.
Under absolute refusal reasons, a trade mark is refused for registration if it comprises without authorisation the name of a person enjoying a reputation in Romania. Absolute refusal reasons are analysed by the Romanian PTO.
As well as the above, Law No 84/1998 provides under relative refusal reasons that a trade mark comprising one’s own surname can be refused for registration or cancelled if registered, if the said trade mark conflicts with an anterior name-right.
There are no official costs for sending cease-and-desist letters and warning letters. If experts are contracted to examine the case and deliver a report, and/or lawyers to advise, fees will be incurred.
If the plaintiff files a claim of infringement in front of the court, an official fee of ROL300 (approximately EUR64) per claim will be incurred. If the claim also concerns damages, the official fee will be calculated based on the amount of damages indicated by the plaintiff in its claim. In addition to that, if the court requires a certain expertise, the fees of the expert will be added to the above-mentioned fees. Alongside the fees listed above, there are also lawyers’ fees, which differ from firm to firm.
The losing party can be ordered to pay the attorney’s fees, together with the official fees paid during the litigation.
Alternative dispute resolution is not compulsory under Romanian legislation. Based on the general civil procedure rules, parties can opt for alternative dispute resolution (ie arbitration). However, in practice, most cases go to court. Parties can agree to submit their case to arbitration through a valid arbitration agreement/clause in a contract. The validity of a trade mark is not subject to arbitration, with Law No 84/1998 expressly stating that interested parties can file a claim of annulment in front of the Bucharest Tribunal.
Under Romanian legislation, there is a possibility for cumulating protection, therefore a trade mark can also be protected by other intellectual property rights provided the respective conditions of protection are met.