Relative Ground Examination for Trade Marks Abolished
Published in “Managing Intellectual Property”, 2010
On May 9 2010, Law 66/2010 for the modification and completion of Law 84/1998 regarding trade marks and geographical indications (Law 66/2010 or the Law) entered into force. The Law brings major changes to the trade mark registration and protection system in Romania. Thus, certain steps have been excluded from the registration procedure, while others have been simplified. Also, the period of time for the examination and registration of a trade mark, as well as for challenging the decisions issued in this respect, have been shortened.
The main change brought by the new Law is the fact that the Romanian State Office for Inventions and Trademarks (SOIT) will no longer examine ex officio the relative grounds for refusal at registration of a trade mark. These would only be examined if an interested third party files an opposition against registration of a trade mark, within two months of the electronic publication of the trade mark application. The law does not define the notion of “electronic publication but, from SOIT’s current practice it appears to refer to the online publication of the application on the official website.
The Law also expressly provides the possibility for third parties to file observations with respect to absolute grounds for refusal at registration of a trade mark, within the same two months term.
Unlike the previous trade mark legislation, the new Law offers the possibility for trade mark applicants to request SOIT to examine their application(s) under an expedite procedure, subject to paying an extra fee.
Absolute grounds for refusal have been introduced, along with new relative grounds for refusal and for annulment.
Aside from the positive effects expected from the simplification and shortening of the trade mark registration procedure, the new Law might give rise to various interpretations and even confusion due to the fact that some of the notions and concepts are provided in a very broad or unclear manner. Nevertheless, some of the notions could be clarified in the new Regulation for the application of Law 84/1998 as modified by Law 66/2010 which has to be adopted within three months from the entry into force of the Law.