Patents and utility models are the two types of industrial property rights, both based on statutory laws. Patents include national patents and European patents. National patents include patent applications and nationalisation of applications under the Patent Cooperation Treaty. We will focus hereinafter mainly on trade marks and patents, which are the most common in practice. Utility models or designs will be dealt with on a case-by-case basis.

National patents and utility models are granted by the Romanian Patent and Trade Mark Office (OSIM) following substantive examination. European patents are validated either using the validation procedure or by selecting the Unitary Patent procedure. Romania has been a participating member of the EU’s Unitary Patent system since September 2024.

National patents typically take three to four years from the date of filing. Utility models typically take less than one year. In general, the costs to grant a patent (including the grant itself) range between EUR3,000 and EUR6,000.

Patents have a maximum term of 20 years from the filing date. Utility models have a maximum term of ten years from the filing date.

Owners have the exclusive right to exploit the patent or utility model. This right includes the right to prevent third parties from exploiting the patent or utility model and the right to license the technical solution. Owners have the obligation to pay the renewal fees.

Supplementary protection certificates are available under the Regulations of the European Union for the protection of pharmaceutical products (Regulation 469/2009 and Regulation 2019/933) and for plant protection products (Regulation 1610/96).

The European Patent Office (EPO) procedure provides the possibility, starting after the grant of the patent, to lodge an opposition within nine months from the date of publication of the grant. The national procedure provides the possibility to lodge an opposition within six months from the date of publication of the grant – this proceeding takes place at OSIM. The opposition or revocation proceeding ends with a decision that can be appealed. Once the patent has been granted (that is, outside the opposition/revocation procedure above described), the patent can be invalidated following an invalidation proceeding in the Municipal Court of Bucharest as court of first instance. European patents validated in Romania are treated as national patents.

The remedies against refusal to grant an industrial property right are represented by appeal proceedings for both the EPO and OSIM procedures.

The patent is deemed abandoned if the annual fees have not been paid in a timely manner. Restoration of rights is possible if the owner can prove that the reasons for non-payment were beyond the owner’s control. The time limit to submit a request for restoration of rights is two months from the cessation of the reason for failure to pay but not later than 12 months from the original deadline. The fees are difficult to predict because they depend on the annuity amount; in any case, they would be more than EUR3,000.

Once granted, the patent can be limited at the request of the owner by lodging a request to amend (which includes limiting) said patent. The amendment or limitation produces effects for third parties upon publication. National law uses the term “full or partial renunciation of patent rights”. The limitation of a European patent is requested to the EPO and must be enforced in the same countries where the patent was initially validated.

The main substantive proceedings that can be brought before courts are as follows:

Trade Marks

• Before the court: (i) action for counterfeiting (for when there is a risk of confusion generated by the fact that the public may make a connection between two signs, assuming that both come from the same subject or associated subjects); (ii) action for the annulment of the trade mark registration; and (iii) action for damages.
• Before OSIM: (i) opposition to the trade mark registration application; (ii) action for revocation of the trade mark registration; and (iii) application to deprive the owner of the rights arising from the trade mark in strictly prescribed cases, such as: (a) lack of genuine use within a period of five years from the date of registration of the trade mark not justified by good reasons; or (b) the trade mark has become the common name in the trade, after registration, for the product or service concerned.

Patents

• Before the court: (i) application for the annulment of the patent; and (ii) action for damages.
• Before OSIM: request for revocation of the patent.

There are also instruments in criminal law for the protection of rights:

• regarding trade marks, in the case of the counterfeiting of a trade mark and the putting into circulation of a product bearing a trade mark identical or similar to a trade mark registered for identical or similar products; or
• regarding patents, in the case of the infringement of a patent, or the disclosure of data contained in patent applications.

Invalidation of the granted right (patent, utility model, trade mark, design) is the third-party remedy to remove the effects of intellectual property.

Intellectual property dispute resolution is handled by two categories of entities: OSIM (eg, opposition to a trade mark registration application or an application for revocation of a patent) and the courts (these disputes are judged in the first instance by the tribunal, on appeal by the court of appeal and on final appeal by the High Court of Cassation and Justice, the challenge motion being different from case to case). OSIM’s decision will be appealable before the court. If the litigation concerns a European trade mark, the venue is exclusively the Municipal Court of Bucharest – Civil Section.

Apart from those listed in 2.3 Courts With Jurisdiction, there are no other specialised bodies or organisations for the resolution of intellectual property disputes.

There are no mandatory pre-trial prerequisites to filing a lawsuit. Usually, warning letters are sent in the case of alleged infringement. Mediation is not commonly used, although possible. In some specific cases, jurisdictional proceedings before OSIM are mandatory (such as a challenge against an OSIM decision refusing a trade mark registration, which cannot be brought directly before the court).

For proceedings taking place before OSIM as court of first instance, the parties can be represented either by a trade mark attorney or by a lawyer. Note that in Romania the profession of industrial property attorney (patent attorney, trade mark attorney, design attorney) is separate from the profession of lawyer. Before the court, there are distinct rules depending on whether the party is a natural or a legal person. In the case of a natural person, the representation may be through a lawyer or other representative (with different rights depending on the circumstances). For a legal person, representation in court can only be made by a lawyer or a legal adviser. For the reasons given above, this article is written by a patent attorney and a lawyer.

Interim injunctions are available. The basic conditions for filing an interim injunction are: proving an interest, proving the appearance of right (prima facie) and proving imminent damage to the owner in the absence of measures – this includes proving urgency.

A person who feels at threat from a potential dispute which could be initiated by a trade mark/patent owner could, for example, resort to the “fact ascertainment” procedure. This procedure is typically executed by the bailiff, who ascertains a state of facts that might change. Another mechanism that could be used is the “securing of evidence”, by requiring the court to order an expert opinion, which may be difficult to obtain in the future.

The general prescribed time limit for a court action is three years. In some cases, there are special time limits; namely, an opposition to a trade mark registration can be filed (before OSIM, with appeal to the court) within two months from the publication of the trade mark, an application for annulment of a patent can be filed during the validity of the patent, and an application for annulment of a trade mark can be filed within the protection period of the trade mark.

EU Directive 48/2004, which has been transposed into national legislation, provides the obligation to provide the court, upon its request, with information regarding the alleged infringement. Some other information can be gathered from the customs authorities pursuant to EU Regulation 608/2013. Such information may be used during court proceedings as evidence in order to establish whether there is infringement. Apart from the above, there is the general rule that the court can request the defendant to provide documents/evidence in the defendant’s possession. A party’s request that the court do so will be automatically granted in certain cases (eg, when the opposing party itself has referred to the document). If a third party holds a document relating to the proceedings, that third party will be summoned as a witness and ordered to produce the document.

The initial pleading standards for industrial property are the same as those for other types of non-industrial property proceedings. The statement of claim must contain the identification data of the parties, the concrete claim, the factual situation and the legal argumentation (the legal texts and their applicability to the case), and it should also specify the evidence. After the filing of the application, new evidence can only be introduced in certain cases expressly provided for by law (eg, the original application has been amended, the administration of new evidence is necessary due to the progress of the proceedings, or the administration of new evidence would not result in the postponement of the trial). A statement of claim can be amended (by modifying the subject matter, the cause of action or the parties) without the consent of the defendant until the first hearing.

The law allows multiple plaintiffs to bring a claim. For example, an infringement action can be brought by both the trade mark owner and the licensee for damages due to counterfeiting acts. Another example is where an invention has been made by more than one person: if a third party engages in acts that allegedly infringe the patent, the two patent owners can both be plaintiffs in an action for damages.

Class actions are not common.

These are some of the main restrictions:

• Trade marks: a trade mark owner has the right to prohibit third parties from using its trade mark, but this right may not be misused (for example, to prevent unfair competition). A trade mark loses its protection when not used for a continuous period of five years.
• Patents: Patents are protected for a limited period of 20 years from the date of filing the patent application. The law provides for certain exceptions and restrictions relating to inventions that cannot be patented, such as diagnostic, treatment or surgical methods applicable to the human or animal body.

As a rule, the owner of trade mark or patent rights (ie, the person who owns the industrial property rights) has standing to sue for infringement of those rights. The defendant will be the party accused of infringing the trade mark or patent. However, there are situations in which another person may become a party to such a lawsuit. One example regards licensees (persons who have acquired a right to use a trade mark or patent). For example, if a person holds an exclusive licence, that person can seek to defend intellectual property rights in court when the owner does not act to defend those rights within the time limit indicated by the licensee.

Direct infringement occurs when it can be proved that the defendant(s) directly carried out the following infringing acts: producing, sale, offering for sale, or warehousing for the purpose of sale.

Indirect infringement occurs when the defendant did not directly carry out the infringing acts but contributed means with which to carry out the infringement while knowing about the infringement ; this is why it is called contributory infringement. Typically, this occurs in the case of patents, for example, producing the means that are used for producing the infringing goods (eg, the moulds for the products). The key word for contributory infringement is “knowingly”; in other words, the presumable contributory infringer was aware of producing means or facilitating in any other way the infringement.

If the infringement of trade mark/patent rights occurs partially outside the Romanian territory, certain specific rules become applicable. For example, Romanian courts may have jurisdiction in cases where the trade mark infringement had an impact in Romania (eg, where counterfeit goods were sold on the Romanian market).

The scope of protection of the right used as the basis for an infringement claim is considered according to the respective protection title (patent, trade mark, etc).

In case of patent infringement, the court does not carry out an examination of the patent right; it presumes that it is valid.

Literal infringement is more frequently encountered than equivalent infringement and less difficult to prove. Equivalent infringement is more difficult to prove.

The prosecution history of the patent is taken into consideration only if the defendant – the alleged infringer – files a counterclaim for patent infringement.

As a rule, the defendant can raise various defences to the plaintiff’s claims. For example, in a trade mark dispute, the party may rely on the lack of similarity of the signs (invoking that there is no risk of confusion between the two).

In a patent litigation, the defendant may rely on defences such as: termination of patent protection; lack of equivalence between the patented object and the technical solution used by the defendant. The most frequent defence against infringement is attacking the right (patent or trade mark) on which the infringement is based, usually by lodging a counterclaim or a separate claim for invalidity. In this case, the infringement claim may be stayed until there is a final decision in the invalidity claim.

An expert’s role is to clarify technicalities of the case. For example, if it is alleged that the defendant has infringed the plaintiff’s patent and the former argues that the technical solution used is different from the patented one, the court could appoint an expert to clarify whether or not the theory of equivalents is applicable. The expert is randomly appointed by the court from a list of experts authorised by the Justice Ministry. The parties have the right to designate an advisory expert who will work together with the court-appointed expert. It is important to note that the court is not obliged to take the expert’s opinion into consideration.

In a patent invalidity proceeding, the patent owner can suggest amendments to the claim(s) to the panel of judges which would limit the scope of protection of the patent.

If a revocation proceeding takes place at OSIM  – see 1.7 Third-Party Rights to Participate in Grant Proceedings– then during the hearing(s) scheduled, the Re-Examination Commission usually makes suggestions of what they think could be acceptable in terms of amended claims, because they are experienced examiners familiarised with patent law.

Contrastingly, in court proceedings, the judges never suggest what could be acceptable in terms of amended claims.

Romanian courts may ask the opinions of third parties. On the external level, the court may request a preliminary ruling from the Court of Justice of the European Union (CJEU), if the ruling could be decisive for the outcome of the case. Internally, OSIM may be asked for its views on specific questions (eg, on the classification of a particular product in the Nice Classification).

The parties may also submit, as out-of-court experts’ reports, opinions from specialists in the field. It is important to note that the court is not obliged to take any third party’s opinion into consideration (except for CJEU decisions).

The reasons for invalidation generally refer to the fact that at least one legal provision for granting the patent or trade mark right was not fulfilled at the date when the protection was granted. The plaintiff must prove the legal provision invoked. Remedies in invalidation proceedings may include partial or full invalidation of said right.

In almost all circumstances, depending on the right, it is possible to obtain either partial invalidation or total invalidation. For patents, a limitation of the protection can be obtained in the case of partial invalidation. Trade marks can be invalidated for some products and maintained for others.

For patents, by amending the claims, a limitation of the protection can be sought and obtained if, by limiting the protection, the objections of the plaintiff are removed.

Invalidation is typically filed as a counterclaim or as a separate claim. In the latter scenario, the infringement case should be suspended until the final settlement of the parallel case. Once a final decision has been reached in the invalidation proceeding, the infringement case can continue if the right was maintained fully or partially.

The main parts of the trial are the typical ones: (a) the regularisation stage – which involves formal checks on the claim; (b) submission of the statement of defence by the defendant (containing factual and legal defences to the plaintiff’s claim), accompanied by evidence; (c) the first trial date; (d) inquiry – the court rules on the pleas; evidence is admitted and administered; and (e) oral pleadings (oral presentation of the parties’ arguments). The trial may be concluded in a single hearing or may involve several hearings. The legal probative means are: written documents, cross-examination, witnesses, material proof, expert reports. Generally, witnesses are heard before the court and, in exceptional cases, outside the court, by lawyers. As for experts, as a general rule, they give written answers (and are heard only in exceptional circumstances). In other cases, the plaintiff makes its requests in several files. For example, an infringement claim and damages may be granted in the same file (if the court has been so empowered by the application) or in separate files. In the latter case, it would make sense to suspend the damages case pending the outcome of the infringement case.

Proceedings taking place at OSIM, acting as court of first instance, are heard by a specialised commission of examiners which is equivalent to a panel of technical judges. Proceedings taking place in the courts are heard by a panel of legal judges (one, two or three judges). There are special court panels that hear industrial property matters.

The parties do not have any influence on who is the decision-maker: the composition of the OSIM commission is decided by the head of the respective department. As to court proceedings, when the lawsuit is lodged, the judges are assigned randomly.

There are no formal mechanisms for settling a case, and settlements are not very frequent.

Where two cases are connected, the court may order the suspension of one case pending the final outcome of the other. In ordering this measure, the court will consider whether the decision to be given depends on the judgment in the other case. For example, an action claiming damages for exploitation of a patent could be stayed pending the settlement of an action for annulment of that patent.

According to Romanian law, the owner of a patent benefits from several legal means to protect its rights in case of infringement. The remarks in 2.1 Actions Available Against Infringement, 2.7 Interim Injunctions and 8. Costs are relevant. An action for unfair competition may be also available if the patent infringement involves an unfair competitive practice.

The plaintiff is entirely at liberty to choose the legal approach and decides the legal remedy as the plaintiff sees fit. A core principle of civil proceedings is availability, which implies that the court is not able to grant something other than what has been requested.

The success of an enforcement procedure where an amount of money is involved will depend on the debtor’s financial situation. Judgments imposing certain conduct can be difficult to enforce.

If the defendant wins the case, they can claim judicial costs from the losing party (the plaintiff). Judicial costs include lawyers’ fees, any court-appointed expert or party’s expert fees, as well as any other expenses necessary for the course of the proceedings (for example, costs incurred due to an out-of-court expert’s report).

There are no different types of remedies for different industrial property rights; they are the same – see 2.1 Actions Available Against Infringement and 6.1 Remedies for the Patentee. The amount is usually higher in the case of patent infringement cases.

Judgments issued at first instance are, as a rule (and in this case), not enforceable. Nonetheless, the winning plaintiff at first instance may request the court to order provisional enforcement of the judgment (eg, in respect of cessation of the infringing acts). In practice, however, this step is rarely used or granted.

Apart from the fact that, for proceedings where OSIM acts as a court of first instance, the decision issued can be challenged before the Municipal Court of Bucharest – Civil Section, there are no special provisions.

The appeal implies a full review of the factual and legal aspects. This feature does not entail the automatic reassessment of evidence. For example, if the first instance court has ordered an expert report and this is considered clear by the appeal court, a request for a new expert’s report will not be granted.

Only the second appeal, where applicable, is limited to a legal review.

Prior to starting litigation, the party seeking to initiate a lawsuit may incur a number of costs. Illustratively, pre-litigation costs may involve: expenses consisting of lawyers’ fees (for drafting notices, legal advice, assessing the position in the potential case, etc), out-of-court technical expert reports and mediation costs (if one opts for mediation, which is very rare).

As a general rule, court fees depend on whether the object of the litigation can be assigned a monetary value – in general, it does have a monetary value. When the plaintiff requests damages, there is a formula by which to calculate the court fees depending on the value of the damages claimed.

The winning party can request – but is not obliged to request – that the losing party reimburse trial costs. See 6.2 Rights of Prevailing Defendants for the categories of costs that can be obtained.

Alternative dispute resolution, which includes mediation and arbitration, is not typically the first choice for settling disputes in Romania. As regards arbitration, there is a debate regarding its applicability to intellectual property matters.

There are no restrictions when assigning industrial property rights. It is highly recommended that the new owner records the assignment with OSIM.

If the owner decides to record the assignment with OSIM, an original of the assignment document or a notarised copy must be submitted at OSIM together with the power(s) of attorney from the old and new owners. The assignment is published by OSIM.

There are no restrictions. Recording the licences with OSIM is highly recommended.

An original of the licence document or a notarised copy must be submitted to OSIM together with the power(s) of attorney from the owner. The licence is published by OSIM.