Trade Marks 2021 Comparisons

Last Updated March 03, 2021

Contributed By Simion & Baciu

Law and Practice

Authors



Simion & Baciu is a partnership co-managed by Cosmina Simion and Ana-Maria Baciu, and was established in June 2019 as a spin-off of several lawyers and consultants from the largest and oldest consultancy law firm in Romania. The firm’s expertise in the intellectual property field was built over the past 20 years and focuses on trade marks, designs, trade dress and trade names, enforcement and border measures, unfair competition, trade secrets and know-how, copyright and related rights, domain names, as well as IP transactional to include IP drafting, negotiation and management of contracts and due diligence work. In addition to intellectual property, the firm strives to provide excellence in other areas of law, across multiple regulated industries, such as media, technology, data protection, life sciences, and a particular focus on gambling and entertainment, consumer protection and advertising. The firm is currently made up of four partners, five associates and one of counsel.

Domestic and EU Laws and Regulations

The following laws and regulations govern the registration, protection and enforcement of trade marks in Romania:

  • Law 84/1998 on Trade Marks and Geographic Indications, as republished and its Implementing Regulation (Government Decision 1134/2010);
  • Government Emergency Ordinance 100/2005 on the Protection of Industrial Property Rights; and
  • Law 344/2005 on certain measures for ensuring the protection of IP rights during customs operations and its Implementing regulation (Government Decision 88/2006);

EU legislation governing trade marks is also directly applicable in Romania, specifically:

  • EU Trade mark Regulation 2017/1001 and its delegated and implementing regulations;
  • EU Trade marks Directive 2015/2436; and
  • EU Regulation 608/2013 concerning customs enforcement of intellectual property rights. 

In addition to the above, provisions relevant with respect to the enforcement of trade marks (as well as other intellectual property rights) are also provided under the following Romanian laws:

  • Law 11/1991 on unfair competition, as subsequently amended and supplemented;
  • Law 21/1996 on competition, as republished;
  • Law 148/2000 on advertising, as subsequently amended and supplemented; and
  • Law 158/2008 on misleading and comparative advertising, as republished.

Applicable statutory laws and principles deriving from the Romanian Civil and Criminal Codes, as well as the Civil and Criminal Procedural Codes are also relevant.

International Treaties

Romania is member to various international treaties relevant for the trade mark sector, such as:

  • the Madrid Agreement for the international registration of trade marks (as revised in Stockholm in 1967, ratified through Presidential Decree 1176/1968) and Protocol relating to the Madrid Agreement (ratified through Law 5/1998)
  • the Paris Convention for the protection of industrial property (ratified through Presidential Decree 1177/1968);
  • the Nice Agreement for the international classification of goods and services for the registration of trade marks (ratified through Law 3/1998);
  • the Vienna agreement for the international classification of figurative elements of trade marks (ratified through Law 3/1998)';
  • the Convention for the establishment of the World Intellectual Property Organisation (ratified through Presidential Decree 1175/9168);
  • the Singapore Agreement on trade mark rights (ratified through Law 360/2007) and its implementing regulation;
  • the Marrakech Agreement establishing the World Trade Organization (ratified through Law 133/1994); and
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Romanian law distinguishes between verbal and figurative marks (with verbal marks including only text and figurative marks including both text and device or devices alone), and 3D trade marks. Other types of trade marks (ie, motion, sound, pattern, holograms, etc) are not specifically provided for or defined under the current Romanian law on trade marks.

Trade marks and service marks are not specifically distinguished upon in the law, but in practice they are differentiated depending on whether they designate for protection goods or services.

In addition to the above, the Romanian trade marks law defines:

  • collective marks, which must be indicated as such in the application form and must be able to distinguish between the goods/services of the members of the association owning the mark and those of other enterprises; and
  • certification marks, as signs that indicate that the goods or services for which they are used are certified by their holder as regards the material, the way the goods are manufactured or the services rendered, the quality, accuracy or other characteristics and can distinguish those goods or services from goods or services which do not benefit from the same certification.

Geographic and Origin Indicators

Separately, geographical indications are defined as names used to identify a product originating in a country, region, or a specific place (locality) of a state, in cases where a given quality, reputation or another determined characteristic can be essentially attributed to that geographical origin.

Although not expressly defined in the Romanian trade marks law, other types of rights as origin indicators are recognised and can be enforced in our jurisdiction, such as rights to a person’s name or image, trade names, trade dress, as well as other industrial property rights.

The Romanian law on trade marks does not provide for any specific marks protected by statute or in a way different than ordinary marks.

However, the Romanian authority would refuse any application that includes, without proper authorisation, reproductions, or imitations of: 

  • coats of arms, flags, state emblems, insignia, official control and guarantee seals, coats of arms, belonging to the countries of the EU and falling under Article 6 ter of the Paris Convention; 
  • coats of arms, flags, other emblems, logos, initials or names that fall under the incidence of Article 6b of the Paris Convention and belonging to international intergovernmental organisations of which one or more EU countries are members; and
  • badges, emblems, badges, coats of arms, heraldic signs of public interest, other than those provided in Article 6 ter of the Paris Convention. 

According to Romanian law, a famous trade mark is defined as a widely known mark in Romania for the segment of audience relevant to the goods or services to which such mark is applied. Establishing this is sufficient and, thus, although the notorious mark can be enforced in Romania without the necessity of being registered or used within the jurisdiction, when opposed to a subsequent application, the famous mark can be evaluated based on the following factors provided in the law:

  • its initial or acquired distinctive character in Romania;
  • the duration and extent of its use in Romania in connection to goods and services for which the ulterior mark was applied;
  • the duration and extent of advertising the notorious mark in Romania;
  • the geographical area of use of the notorious trade mark in Romania;
  • the degree of awareness of the notorious trade mark on the Romanian market by the segment of audience to which such is addressed; and
  • the existence of identical or similar trade marks protected for identical or similar products by other persons, different than the one claiming the rights over the notorious mark.

In addition to the above, trade marks protected abroad can be relied upon in opposition/cancellation proceedings, provided that the contested applications/registrations were applied for in bad faith.

According to Romanian law, the term of protection of a registered trade mark is of ten years from its filing date. The initial ten-year term can be extended indefinitely, through subsequent renewals (which can be filed the earliest with six months prior to the expiry date or during a grace period of six months following the expiry date).

According to Romanian law, the rights in a trade mark shall be exhausted and its owner cannot forbid third parties from using said mark on goods that were placed into commerce under said mark in the EU or in the European Economic Area by the trade mark owner or with their consent.

The above shall not be applicable if there are valid reasons justifying the opposition of the owner to the subsequent act of marketing the goods, in particular when their condition is changed or altered after they have been initially placed on the market.

Romanian law does not provide for any symbols to be used by trade mark holders/applicants.

Trade mark rights can be assigned independent of the owner’s business in which said mark is incorporated. The assignment agreement must be concluded in writing and signed by both parties, under the sanction of nullity of the agreement, except for the cases in which the assignment results from a court order or following the fulfilment of other contractual obligations.

Assignments can be total or partial (ie, only for certain goods/services), and cannot be territorially limited.

If the owner’s entire business patrimony is transferred, such transfer will also include the assignment of the trade mark rights, except when the parties specifically agree otherwise.

Identical or similar marks belonging to the same owner, and which are registered and used for identical or similar goods or services, can be assigned only in full and only to one person, under sanction of nullity of the assignment.

Licenses can be total or partial (ie, for all or only a part of the goods/services protected under the mark), perpetual or limited in time, exclusive or non-exclusive and can extend to the entire Romanian territory or limited to only a part thereof.

For the duration of a license agreement, the licensee is obliged:

  • to use only the mark that forms the object of the license in connection to those goods and services included in the license
  • to apply the mention “under license” next to the mark applied on the goods that form the object of the license, in line with the license terms. 

The holder of an exclusive licence can bring trade mark enforcement actions with respect to the licensed rights if, after he has had notified to the owner the infringement, the latter did not take any action within the term specified by the licensee in his notice.

A non-exclusive licensee cannot bring enforcement actions with respect to the licensed rights, except when such right is specifically provided for in the license agreement. 

Trade mark assignments/licences are not mandatory to be registered before the trade mark office.

However, both become opposable to third parties from the date of their publication in the Official Bulletin, therefore, their recordal allows the assignee/licensee to publicise the rights obtained through the assignment/licence.

The registration of a licence does not represent a condition for the use of the licensed mark by the licensee to be regarded as an effective use of said mark by the trade mark owner during procedures for acquiring, maintaining or defending its trade mark rights. 

As mentioned, if the owner’s entire business patrimony is transferred, such transfer will also result in the assignment of the trade mark rights, except for the cases when the parties specifically agree otherwise.

Identical or similar marks belonging to the same owner and which are used for identical or similar goods or services may be transferred by assignment only in full and only to one assignee, under sanction of nullity of the act of assignment. Romanian authority may refuse to record the assignment’s if such is deemed to mislead the audience with respect to the nature, quality or geographical origin of the goods or services under the assigned mark (refusal can be overcome in the event that the assignee agrees to limit the assignment to those goods and services for which the trade mark is not misleading).

Licences or assignments in relation to pending trade mark applications are also valid.

However, in the case of licences, their registration would be published in the Official Bulletin only after the trade mark application(s) matured into registration(s). 

The Romanian trade marks system does not distinguish between use/intent to use applications and proof of use is not a requirement for obtaining trade mark protection in our jurisdiction.

Trade marks can be given as a security and can be subjects to rights in rem or levied in execution, independent from the owner’s business patrimony. The registration of said rights on the Trade Marks Register can be requested by the interested party and must be accompanied by supporting documents.

Also, if a trade mark owner initiates insolvency proceedings, at the request of the interested party (supported by proof documents), the trade marks office records such mention on the Trade Marks Register.

The Romanian trade mark system is a first-to-file system, meaning there are no requirements to use the mark in order to be granted protection. Also, rights in a trade mark are not acquired merely by using the mark being necessary for such to be registered (save for famous trade marks, whose protection is recognised irrespective of registration/use).

The same registration procedure is applicable for all types of trade marks.

There is only one Trade Marks Register in Romania which can be publicly accessed via the official website of the office. However, only certain pieces of information are publicly available in the online register:

  • the trade mark particulars;
  • the lists of goods and services;
  • information regarding the owner/applicant and its representative; and
  • the filing/registration dates.

No public access is given to documents pertaining to a certain trade mark file or to procedures involving the mark (office actions, oppositions, etc).

Prior to seeking trade mark protection, it is customary and recommended to perform a preliminary availability search to assess whether there are any obstacles to registrations (such as conflicting earlier trade marks). The search would be in the public available databases relevant for the Romanian jurisdiction (EUIPO, WIPO and the official register made available by the Romanian office). Relying upon TM View data for Romania is not recommend, as often information is not updated. 

Once registered, the term of protection of a trade mark is of ten years from its filing date. The initial ten-year protection term can be extended indefinitely, through subsequent renewals (which can be filed the earliest with six months prior to the expiry date or in a grace period of six months following the expiry date). If the renewal is filed during the grace period, a surcharge will be applied by the office, amounting to 50% of the standard renewal fees.

Romanian law does not include any specific provisions relation to the owner’s possibility to update or refresh a trade mark registration. Information recorded on the Register in connection to a registered mark can be changed in respect of the name/address of the holder and the name/address of its empowered attorney. The owner can seek a limitation of the list of goods/services covered by the trade mark.

The Romanian system is a first-to-file process and allows multi-class applications. Both natural persons, legal entities, as well as associations/trade bodies or any other entities with legal capacity can stand as trade mark owners.

The trade mark application must include the trade mark particulars (trade mark image, class specification, the trade mark’s description, where applicable) and details of the applicant and must be accompanied by the proof of payment of the official fees. Also, if a priority right is invoked, information relating to said right must be included in the application.

Foreign applicants must be represented by a local trade mark attorney and, for this purpose, a Power of Attorney must be granted and filed before the authority, in original, within maximum 30 days from the filing date.

A smooth trade mark registration procedure, which does not encounter refusal notices/office actions or third-party oppositions, takes approximately six to eight months from filing to mature into registration.

Romanian law does not provide for any requirements in connection to a trade mark’s use in commerce prior to being filed or as a condition for being granted protection. 

However, a registered trade mark's rights can be revoked at the request of interested parties through revocation claims (to be filed before the Bucharest Tribunal) if the owner did not genuinely use the mark for a continuous term of five years (calculated from the termination date of the registration procedure) and when there are no reasonable reasons for non-use. 

The burden of proof in such actions rests with the trade mark owner, which must prove (with any evidence available) that it has genuinely used the mark on the Romanian market. According to law, it is assimilated to genuine use:

  • the use of the mark in a different form than the one registered, but which does not alter its distinctive character;
  • the impossibility to use the mark due to circumstances which are not in the control of the owner (such as marketing restrictions);
  • applying the mark to goods or their packaging only for export purposes; and
  • use of the mark by a third party with the owner’s consent. 

The Romanian system does not allow for series mark registrations.

The Romanian authority does not perform ex-officio examinations of trade mark applications in view of the existence of prior conflicting rights.

During a trade mark’s registration procedure, third parties can file observations (relying upon the absolute grounds of refusal provided by law) or oppositions (relying upon the relative grounds for refusal provided by law – ie, prior conflicting rights).

Observations on absolute grounds can be filed in writing by any person in a maximum term of two months from the application’s first publication. Entities filing observations do not become party to the registration procedure (meaning that the decisions rendered by the examiner upon reviewing the application and the raised observations are not also communicated to them).

Oppositions on relative grounds can be raised by any interested party in a term of two months from the second publication of a trade mark application (which occurs once the application is accepted by the authority). Opponents must support their oppositions in regards the prior rights invoked. Oppositions must be raised in writing and involve the following stages:

  • once filed, oppositions are notified to the applicant and the parties are granted a two-month term for discussing a potential amicable resolution of the case (this term can be extended with an additional maximum term of three months)
  • if no amicable resolution is obtained, the authority notifies the opponent to support its opposition with evidence and arguments in a maximum term of 30 days;
  • the opposition and opponent’s arguments/evidence are notified to the applicant, being granted a 30-day term for filing their observations in response;
  • the applicant may request the opponent to present evidence that the earlier trade mark rights relied upon in the opposition have been genuinely used in connection to the relevant goods/services; in the absence of evidence timely filed by the opponent, the opposition is rejected without a further analysis of its merits; and
  • the authority issues a decision in connection to the opposition in a term of two months from the closure of the contradictory stages described above.

Decisions rendered by the examiners in relation to the opposition proceedings can be contested before the Appeals Committee of the same office within 30 days from their service date. Further, the decisions rendered by the Appeals Committee can be contested within 30 days before the Bucharest Tribunal, the latter’s rulings being subject to appeal before the Bucharest Court of Appeal.

Trade mark applications can be withdrawn by applicants at any time during their registration procedure.

A trade mark application can be altered/amended only in respect of:

  • correcting the applicant’s name and/or address;
  • correcting any errors pertaining to the list of goods/services (for example, incorrectly written terms) and which do not extend the initially filed lists; and
  • any other aspects which do not substantially alter the sign applied for protection.

If the amendments relate to the trade mark’s image and are requested after the application’s first publication, the application will be subject to a new publication in the Official Bulletin. 

Trade mark applications and registered trade marks covering several goods and services can be divided into one or more applications each to cover different goods/services. Divisionary applications enjoy the same filing date as the initial applications, as well as the invoked priority dates (if applicable).

Divisional applications would be rejected if:

  • they are filed prior to the initial application received a filing date;
  • they are filed during the term open for third party oppositions;
  • they seek to divide goods/services that are subject of an active opposition;
  • they seek to divide goods/services that are subject to cancellation/revocation proceedings; and
  • they are filed after the recordal in the trade mark file of a levy of execution/rights in rem.

If a trade mark application includes incorrect information (for example, errors in the applicant’s name or address, errors in classification), such can be corrected through a request field by the applicant/its representative before the office. The request needs to be motivated/supported with documents (where applicable). 

The Romanian authority will refuse ex-officio trade mark applications based on the following absolute grounds:

  • if the signs applied for protection cannot qualify as trade marks per their definition provided by law;
  • if the signs applied for protection lack a distinctive character;
  • if the signs applied for trade mark protection consist exclusively of signs or indications that have become customary in the current language or bona fide established practices of the trade;
  • if the signs applied for protection consist exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or manufacturing time of the goods or offering of services, or other characteristics thereof;
  • if the signs applied for protection consist exclusively of the product shape imposed by its nature or necessary for obtaining a technical result or which gives substantial value to the goods;
  • if the signs applied for protection are liable to mislead the public towards the geographical origin, quality or nature of the goods or services;
  • if they are excluded from registration according to the provisions of European Union legislation, national legislation or international agreements to which the European Union or Romania is a party, which provide for the protection of designations of origin and geographical indications;
  • if they are excluded from registration under the provisions of European Union legislation or of international agreements to which the European Union is a party, which provide for the protection of traditional terms for wines;
  • if they are excluded from registration in accordance with the provisions of European Union legislation or international agreements to which the European Union is a party, which provide for the protection of traditional specialties guaranteed;
  • if the signs are composed of or reproduce in their essential elements an earlier name of a plant variety, registered in accordance with European Union or national law or with international agreements to which the European Union or Romania is a party, which confers protection of rights ownership of a plant variety and relating to plant varieties of the same species or of closely related species;
  • if they include, without consent, the image or surname of a person that enjoys a reputation in Romania; 
  • if they include signs of high symbolic value, in particular a religious symbol;
  • if they are contrary to public order or morality;
  • if they include, without the authorisation of the competent bodies, reproductions or imitations of coats of arms, flags, state emblems, insignia, official control and guarantee seals, coats of arms, belonging to European Union countries and falling under Article 6 ter of the Paris Convention;
  • if they include, without the authorisation of the competent bodies, reproductions or imitations of coats of arms, flags, other emblems, logos, initials or names that fall under the incidence of Article 6b of the Paris Convention and belonging to international intergovernmental organisations of which one or more European Union countries are members; and
  • if they contain, without the authorisation of the competent bodies, badges, emblems, badges, coats of arms, heraldic signs of public interest, other than those provided in Article 6 ter of the Paris Convention.

When the authority raises a refusal notice based on any of the above absolute grounds, it notifies such to the applicant, who is granted a 30 – day term to present his response. This term can be extended at applicant’s request for an additional period of 30 days.

Refusals raised on absolute grounds relating to the trade mark’s lack of distinctive character, the fact that the trade mark is descriptive or commonly used in connection to the goods/services applied for protection, can be overcome if the applicant proves that the sign applied for protection has acquired a distinctive character because of its use on the market.

Decisions rendered by the Romanian office in connection to a trade mark’s registration procedure or in connection to any other procedures (including refusal to register a trade mark, recordals, transfer of rights, renewals, etc) can be challenged before the office’s Appeals Committee within 30 days from their service date. Decisions rendered by the Appeals Committee can be further contested in 30 days from their service date before the Bucharest Tribunal, while the tribunal’s decisions are further subject to appeal before the Bucharest Court of Appeal.

Romania is member to the Madrid system for the international registration of trade marks. There are no particular requirements relating to international registrations. Once notified to the Romanian office, such follow the same procedures and provisions applicable to national applications.

Third party oppositions can be raised before the Romanian authority within two months from the application’s second publication in the Official Bulletin (after such was issued an acceptance decision by the office). This term is non-extensible.

The Romanian trade mark law provides for the following relative grounds for refusal which may be raised by interested parties in opposition (and cancellation) procedures:

  • when there is a conflict between identical trade marks protecting identical goods/services;
  • when the filed mark is identical or similar to an earlier trade mark and designates identical or similar goods or services, where there is a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade mark;
  • when the filed mark is identical or similar to a previous trade mark registered in Romania, or in the European Union, regardless of whether the goods or services for which it is requested or registered are identical, similar or not similar to those for which the earlier mark is registered, when the earlier mark enjoys a reputation in Romania, or, in the European Union (as the case may be) and the use of the subsequent mark would lead to unjust benefits from the distinctive character or reputation of the earlier mark or would be detrimental to the distinctive character / reputation of the earlier mark;
  • when there is an application for registration of a designation of origin or a geographical indication filed in accordance with national or European Union law before the date of filing the trade mark application or the date of priority invoked in support of the application, subject to its subsequent registration, and the respective designation of origin or geographical indication confers on the person authorised to use it the right to prohibit the use of a subsequent trade mark in Romania;
  • when there is a sign in connection to which rights were acquired before the filing date of the contested application or, if applicable, before its priority date, and if this sign confers on its owner the right to prohibit the use a subsequent trade mark in Romania;
  • when its registration is requested by the representative of the trade mark owner, in his own name and without the consent of the trade mark owner, except for the situation in which the representative justifies his filing;
  • when there is a previous right, other than those provided above, in particular a right to a name, a right to an image, a copyright, an industrial property right; and
  • when the mark may be confused with an earlier mark protected abroad, provided that, at the date of filing the application, the applicant has acted in bad faith.

The opposition may be filed by any party that justifies an interest and is able to support their prior rights (per the relative grounds for refusal detailed in 5.2 Legal Grounds for Filing an Opposition).

Foreign opponents must be represented before the authority through a local counsel.

Attorney fees depend on the complexity of the case and averagely range between EUR500 and EUR800 per procedure. Official fees are EUR60 for opposing to a mark in one class, with an added EUR30 for which additional class.

The opposition procedure in our jurisdiction does not involve discovery, witness statements or a public hearing.

For detailed information regarding the opposition procedure please refer to our response in 4.5 Consideration of Third-Party Rights in Registration.

Decisions rendered by the trade mark office in connection to the registration procedure or in connection to any other procedures can be challenged before the office’s Appeals Committee within 30 days from their service date. Decisions rendered by the Appeals Committee can be further challenged in 30 days from their service date before the Bucharest Tribunal, while the Tribunal’s decisions are further subject to appeal before the Bucharest Court of Appeal.

Appeals filed before the Appeals Committee involve public hearings and usually involve six months or more until a decision is rendered by the Committee (additional time required for the service of the motivated decision).

Both revocation and cancellation proceedings can be raised at any time during the term of protection of a registered mark.

However, non-use revocation procedures can be raised only after a five-year term from the date of closure of the trade mark’s registration procedure.

A revocation claim may be filed if:

  • the trade mark was not put to genuine use for the goods or services for which it was registered within five years following the date of closure of the registration procedure and there are no reasonable reasons for non-use;
  • after its registration, the trade mark became a common designation, in commerce, for the goods/services protected, due to the owner’s actions or inactions;
  • after its registration and following its use (by the owner or with their consent) the trade mark became susceptible to deceiving the public as regards the nature, quality, geographical origin of the goods or services for which it was registered; and
  • the trade mark was not registered in the name of the person entitled to act as applicant/owner.

A cancellation claim may be filed for any of the absolute or relative grounds for refusal provided by law, see 4.9 Refusal of Registration and 5.2 Legal Grounds for Filing an Opposition, respectively.

Any interested party may file a cancellation or revocation claim, if it is able to substantiate an actual interest in doing so. Usually, owners of either prior or posterior trade marks are considered as having the requisite interest in initiating lawsuit and, consequently, as having legal standing. The trade mark office cannot initiate ex-officio cancellation/revocation claims.

Currently, cancellation and revocation claims, with respect to national trade mark rights, may be brought only before the Bucharest Tribunal, which has exclusive jurisdiction to hear such claims.

Starting 14 January 2023, said claims may be filed also before the trade marks office.

Partial revocation or cancellation is possible if it concerns, for example, only certain classes of goods or services.

In theory, a defendant in a revocation/cancellation claim may, by its own motion, file for an amendment of the trade mark registration to acquiesce to the claims put forth by the claimant.

Such amendment may be made via procedural acquiescence before the court, case in which the court will rule against the defendant, or before the Trade mark Office, case in which the claim will remain without an object if the amendment to the registration is approved by the Trade Mark Office before the litigation is settled.

For more details with respect to the amendments/changes that can be introduced with respect to a trade mark, see 4.6 Revocation, Change, Amendment or Correction of an Application to 4.8 Incorrect Information in an Application.

In theory, revocation and cancellation claims are heard separately from infringement claims, the courts having jurisdiction being different.

Nevertheless, a defendant in an infringement claim may counterclaim with a revocation or cancellation claim. In this case, it is up to the judge to determine if all claims are to be heard together or separately. If heard separately, the infringement claim is likely to be stayed pending resolution of the revocation or cancellation claim.

A trade mark infringement claim should be initiated within the general three-year statutory term, calculated as of  the moment when the aggrieved party knew or should have known the infringer and the infringement (harm) caused.

Trade mark infringement claims, including for trade mark dilution and cybersquatting, are available both for registered and unregistered trade marks. However, the unregistered trade marks must be notorious to be enforced.

Both the trade mark owner and the licensee (exclusive/non-exclusive) may initiate trade mark infringement lawsuits against the infringer. However, a non-exclusive licensee may only initiate lawsuit with the consent of the trade mark owner. The exclusive licensee may initiate action on its own if the trade mark owner fails to take action after being notified by the licensee to this end and in the term(s) requested by the licensee.

In case the trade mark infringement litigation is initiated by the trade mark owner, the licensee(s) may join the process.

Aside from claiming exclusive trade mark rights related to famous trade marks (which are not subject to the registration condition), a trade mark applicant cannot seek relief to stop purported infringement acts before the application matures into registration and its registration is made public. However, such applicant may seek a damages relief for the infringement actions that took place after the application was published but before it matured into registration.

Class actions are not regulated as regards trade mark infringement.

There are no prerequisites to filing an infringement lawsuit. Nevertheless, warning letters (cease and desist letters) are commonly used prior to initiating lawsuits.

Infringement actions, as well as preliminary injunction claims are available only for registered rights or for notorious trade marks, which are recognised without registration.

While in theory a trade mark infringement case may be proven to be not only groundless but abusive, in practice this is rarely if ever used as grounds for obtaining damages by a winning defendant.

Common procedural rules apply for trade mark litigation as well. Said rules require initial pleadings to state in detail the facts and legal arguments, as well as the evidence on which the claimant relies on. Pleadings may be supplemented or amended, as well as new evidence adduced, by the first hearing date; after such date, any amendments to the pleadings must be made only subject to the defendant consenting to it (which almost never happens in practice).

A defendant in a trade mark infringement may counterclaim or initiate separate proceedings aimed at cancelling or revoking the trade mark rights invoked in the infringement.

Depending on the value of the claim, an infringement lawsuit may be:

  • commenced before a lower court, appealed before a Tribunal and subject to a second appeal before a Court of Appeal for claims below RON200,000 (approximately EUR42,000); or
  • commenced before a Tribunal, appealed before the Court of Appeal and subject to a second appeal before the High Court of Cassation and Justice.

There are no prerequisites before filing an infringement claim.

Representation before the courts of law requires the presence of a lawyer.

The office’s decision analysing the similarity of signs/likelihood of confusion between the same signs which are also compared for the purpose of infringement would not stand as res judecata but is likely to influence upon the outcome of the infringement claim on the merits.

No declaratory relief may be obtained by a defendant seeking to protect itself from an infringement claim.

However, the defendant may request a bond to be posted by the claimant to secure damages if the infringement claim or protective measures/injunction orders are found to be abusive.

Common procedural rules apply for counterfeiting litigation as well. Custom seizure (see 9.7 Customs Seizures of Counterfeits or Criminal Imports) applies.

There are no special procedural rules for trade mark proceedings.

Trade mark lawsuits are determined by judges having legal background with the cases being aleatory distributed to judges by implemented algorithms.

Depending on the complexities and technical nature of the case, the judge may request or benefit from the expert opinion of accredited experts in certain fields.

For trade mark infringement to exist, it is necessary for the sign to be used in a commercial activity. Good faith or descriptive use does not qualify as trade mark infringement assuming that it either falls within the acts of use of a registered trade mark permitted by law or is made in compliance with honest commercial practices without taking unfair advantage of the prior trade mark’s reputation.

A trade mark owner may seek court protection for its trade mark against the use in the course of trade of any identical or similar sign applied to identical or similar goods or services, or use generating a likelihood of confusion (including the risk of association) between the sign and the earlier trade mark.

A trade mark owner may lodge an infringement claim against the use of a sign which is similar or identical with the trade mark, and is used for similar, identical or different products/services, where the trade mark is well known in Romania/the EU (as the case may be) and there is a risk that, by unjustifiably using the sign, undue benefits are obtained from the reputation or the distinctive character of the registered mark.

Equally, the use of a similar or identical sign to a trade mark, in other circumstances than to distinguish goods or services, when the use of such sign unduly derives benefits from the reputation or the distinctive nature of the trade mark, may be pursued in court as a trade mark infringement.

As mentioned in 8.3 Factors in Determining Infringement, the use of a similar/identical sign to a trade mark may be prohibited in certain conditions if such use unduly generated benefits from the reputation or distinctive character of a prior trade mark. Dilution, tarnishment or cybersquatting claims may all be pursued as trade mark infringement.

The registration of a trade mark confers exclusive rights on its owner, hence the owner may pursue any claims against infringements until such trade mark registration is cancelled or its trade mark rights revoked by the competent courts.

A defendant in a trade mark infringement lawsuit may seek to apply the following defences:

  • claiming priority rights derived from a trade mark registration or from the use of a famous mark;
  • filing a cancellation counterclaim raising any of the absolute/relative grounds for refusal provided by law;
  • filing a revocation counterclaim against the trade mark rights invoked in the infringement (for example, if the trade mark was unjustifiably not used for a period of five years prior to the infringement claim being lodged);
  • claiming tolerated use/acquiescence – if the infringement claimant has known and tolerated the use of the latter sign/trade mark for a period of five uninterrupted years;
  • claiming exhaustion of rights – ie, a trade mark owner cannot prohibit the use of a trade mark in connection to goods which were put on the market by them or with their consent;
  • use of own-name and address defence, in the case of individuals;
  • claiming descriptive/nominative or referential fair use and not use as a trade mark;
  • claiming forfeiture; and/or
  • claiming a violation of competition law may be used to the extent that trade mark infringement claim is seeking to institute a competition restriction (such as an export/import ban).

Romanian law does not recognise common-law discovery mechanisms. Nevertheless, the taking of evidence may be ordered by the court from either party to the dispute as well as from third parties and authorities. Usually, the taking of evidence is done in the first tier of jurisdiction when most known evidence are administered before the court.

The taking of evidence may be made prior to the litigation being initiated, by way of measures to protect evidence in case there is a risk of them being lost.

Under Romanian law an expert may be called to clarify certain technical matters, to the benefit of the court, for the court to fully grasp a certain factual situation. No legal interpretation may be sought from experts. In practice, depending on the court’s view and the complexity of the case, experts may be called to also assess likelihood of confusion, although courts have also ruled that the assessment of the likelihood of confusion is a matter for the court to determine and not for the experts to do so.

The act of counterfeiting is defined as a criminal offence, punishable by imprisonment (three months to two years) or a criminal fine. Criminal action may be prosecuted against the infringer ex-officio (by the criminal investigation bodies) or at the request of the aggrieved party. Depending on the claims raised, the parties may reconcile thus ceasing the criminal case.

Litigation costs may vary greatly depending on the circumstances and complexities of the case, procedural incidents, the defendant’s procedural behaviour, the need and number of experts and expert reports required by the technical nature of the case, court’s approach to the litigation, etc.

Typically, a straightforward infringement claim (where no procedural incidents are caused or arise) may lead to costs of EUR3,000 to EUR20,000 for a first tier of jurisdiction.

The following injunctive reliefs may be ordered by a court of law at the request of a trade mark owner:

  • temporary cessation of the infringing actions or the provision of a guarantee intended to ensure the compensation of the right holder;
  • seizure or delivery of the goods suspected of infringing trade markrights;
  • precautionary seizure of the movable and immovable assets of the alleged infringer, including blocking its bank accounts and other assets, if an infringement is committed on a commercial scale and if the injured party demonstrates circumstances likely to endanger the recovery of damages in case an infringement is found; and
  • measures for preserving evidence (including seizing evidence from the infringer or third parties).

The court is bound to order the relief sought by the complainant and cannot substitute such by another relief against the claimant’s will.

Injunctive relief may be ordered by the court to prevent an actual or imminent infringement of an established trade mark right that would lead to a harm irreparable/difficult to repair. Failure to reasonably establish either the claimant’s right, an action likely to infringe such right or the harm irreparable/difficult to repair may result in a dismissal of the sought provisional measures. A defendant may use all common defences to obtain the dismissal of a provisional measure.

Under Romanian law monetary remedies may be awarded for effective loss and loss of profits. Only actual, direct and properly evidenced damages may be awarded. While the judge does enjoy a certain margin of appreciation as to the qualification of damages, the quantification of damages cannot be ruled other than based on proper computation. Where computation is extremely difficult the judge may estimate the quantum of damages.

Romanian law does not award increased or statutory damages.

Counterfeited products may be seized and destroyed via a specific procedure.

During a trial, costs are advanced by each party for its own claims (stamp duty), witness and experts’ costs and fees and attorney fees. The “loser pays” principle applies, and the winning party may receive reimbursement of its full costs from the losing party. Recovery of attorney fees may only be partial, depending on the judge’s decision.

Litigation on the merits of a trade mark infringement claim is always conducted inter partes, with both parties being subpoenaed to appear before the court. Subpoenas are prepared and sent by the court.

Provisional measures/injunctive remedies may be taken via ex parte proceedings but appeals against such decisions are, again, conducted via inter partes proceedings.

“Loser pays” rule applies in terms of attorney fees and general costs of the proceedings. Therefore, a winning defendant may stand to recoup its costs entirely, save for attorney fees in respect of which judges may order only partial reimbursement. No declaratory relief is formally issued to a prevailing defendant. However, if proceedings are duplicated or if similar proceedings are further launched, the decision initially finding in favour of the defendant may be used in the duplicated or similar proceedings, depending on its contents.

The Romanian legal system observes and applies the provisions of EU Regulation 608/2013 on certain measures for ensuring the protection of intellectual property rights during customs operations. Similar provisions are also provided under national law. In accordance with such provisions, customs officials perform seizures of any goods suspected of infringing intellectual property rights, which are further notified to the holders of such rights.

Following a granted application for action, owners respond to the seizure and can request the destruction of any seized goods that are confirmed as counterfeits (provided that the other legal provisions apply – more specifically, provided that the declarant/addressee of the seized goods did not oppose to the seizure measure).

If an opposition was raised by the addressee/declarant of the seized goods, the rights holder must initiate legal proceedings to ascertain that his rights have been infringed, as a condition for the goods to remain seized and to be further destroyed. 

The provisions of EU Regulation 608/2013 and the corresponding Romanian legislations are not applicable to goods deriving from parallel imports (although, in practice, the Romanian customs (at the request of rights holders) have also seized these types of goods).

There are no differentiated remedies by type of trade mark.

There are no mandatory settlement procedures albeit the judges may recommend (but not enforce) mediation or amicable resolution. In practice, little of either are used in trade mark related cases.

Settlements may be reached at any time during the proceedings and may be acknowledged by the court also via a decision issued to this effect.

ADR is not a common way of settling trade mark-related cases. Mediation is regulated in Romania but is entirely optional for the parties and is rarely used.

However, in the case of conflicts between trade mark rights and domain names, parties often file complaints before ICANN approved dispute resolution service providers, as an alternative to court claims. However, this is regulated not by law, but via the registration contracts regarding domain names.

A defendant would seek to counterclaim in an infringement case with a trade mark cancellation claim against the claimant. If no counterclaim is filed or otherwise infringement and cancellation proceedings are not joined (by court order), then the infringement case may be stayed pending the trade mark cancellation case. However, this is not an automatic stay of proceedings and hence it cannot be excluded that in certain cases a judge may dismiss a stay.

Decisions issued in the first tier of jurisdiction in cancellation, revocation, infringement proceedings are subject to appeal generally within 30 days as of service of the appealed decision. An appeal is usually settled within six months to one year.

There are no specific procedural provisions regarding trade mark proceedings; the trial follows common civil procedure rules.

Appeals follow a full review process, with the case being scrutinised as regards the factual situation, evidence and the legal characterisation of the claims and defences.

In principle, if they satisfy the conditions provided by law, trade marks can also be protected by copyright, if such represent original works (eg, logos, but also slogans).

Names of famous persons may not be registered as trade marks by other persons/entities.

In Romania, the scope of trade mark laws is not limited in our jurisdiction based on copyright or related rights.

Rights which are subject to trade mark protection can also benefit from additional protection as design rights, provided that they fulfil the legal conditions in such respect (ie, the condition of novelty and individual character). For example, in practice, a trade mark protecting the image of a product label can be also registered as a design, etc.

The Romanian trade marks law recognises the rights in a persons’ name and image. Provided that the applicants are entitled to secure exclusive rights over said name/image, the applications would be accepted in Romania. Also, the rights in a person’s name/image can be enforced against third party applications or in infringement actions, when the subsequently filed/used signs relate to a person that enjoys a reputation in Romania. 

In Romania, unfair competition law expressly sanctions, as criminal offence, production, import, export, warehousing, sale or offering for sale of products or services bearing false mentions regarding trade marks (amongst others), with the purpose to deceive competitors or beneficiaries.

Consumer protections legislation sanctions any activity that may create confusion with the trade mark belonging to a competitor as misleading.

On 30 June 2020, the Romanian legislators adopted a legislative proposal amending the Romanian trade marks law, where the amendments entered into force on 13 July 2020.

Romania was overdue to transpose the provisions of the EU Trade Marks Directive No 2015/243 (some of which were scheduled to be enacted until 14 January 2019) and on 2 July 2020, the Commission decided to refer Romania to the Court of Justice, with a request for financial sanctions, following the lack of notification of transposition measures of the Trade Mark Directive.

The new legislation:

  • amends the definition of signs that can be protected as trade marks;
  • reduces certain procedural terms;
  • supplements the absolute grounds for refusal that can be raised against a trade mark application;
  • eliminates the “controversial” five-year term that is currently provided for filing absolute/relative grounds invalidity claims against a registered trade mark;
  • introduces new requirements for a clear and precise description of the goods/services for which new applications are filed;
  • introduces the option of filing cancellation and invalidity claims also before a specialised committee of the Romanian trade marks office (applicable from 14 January 2023); and
  • supplements the acts that can be asked to be forbidden by a trade mark holder in defending its trade mark rights, adding the use of a trade name that is identical/similar to a registered mark and the use of an identical/similar sign in comparative or misleading advertising.

No specific rules are being set by the trade mark legislation with respect to online services/internet.

Romanian e-commerce legislation is fully in line with the EU legislation, trying to find balance between the rights of trade mark holders and the rights of the marketplace/platform.

No significant case law is yet available in Romania. It is expected, however, that there will be an increase in the coming years, as platforms (ie, marketplace, music, transportation or food, etc) and their importance in the people’s life increases, and, alongside this, the challenges that come with such development.

While increase attention should be given to protection of intellectual property, Romania has no special rules or norms regarding trade marks as used in business.

Common principles should be followed:

  • checking availability of any sign before actually starting to use it;
  • filing for registration prior to commencing use;
  • protecting trade marks, even if this means starting what seem to be legal endless wars; and
  • monitoring infringing signs used, registered or filed for registration, so that you may commence legal actions in due time.

Most important, invest in protecting intellectual property rights. 

Simion & Baciu

11 Maior Alexandru Campeanu
1st Floor, Apt. 3
1st District
Bucharest
Romania

+40 31 419 04 88

+40 31 419 04 88

Ana-maria.baciu@simionbaciu.ro www.simionbaciu.ro
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Law and Practice in Romania

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Simion & Baciu is a partnership co-managed by Cosmina Simion and Ana-Maria Baciu, and was established in June 2019 as a spin-off of several lawyers and consultants from the largest and oldest consultancy law firm in Romania. The firm’s expertise in the intellectual property field was built over the past 20 years and focuses on trade marks, designs, trade dress and trade names, enforcement and border measures, unfair competition, trade secrets and know-how, copyright and related rights, domain names, as well as IP transactional to include IP drafting, negotiation and management of contracts and due diligence work. In addition to intellectual property, the firm strives to provide excellence in other areas of law, across multiple regulated industries, such as media, technology, data protection, life sciences, and a particular focus on gambling and entertainment, consumer protection and advertising. The firm is currently made up of four partners, five associates and one of counsel.