The Trademark Bill Heads to Parliament
Published in Managing Intellectual Property, 2009
After Romania’s parliament rejected in 2007 a bill to modify and complete Law no. 84/1998 regarding trade marks and geographical indications, a new bill has now been approved by the government and will be brought before legislators.
The bill, which might still face modifications during the approval process, contains major changes with respect to the system of trade mark registration and protection in Romania. Thus, certain steps have been excluded from the procedure, while others have been simplified. Also, the terms for examining and registering a trade mark, as well as for challenging decisions issued in this respect, have been shortened.
The main novelty brought by the new bill is the fact that Romanian State Office for Inventions and Trademarks (SOIT) will no longer examine ex officio relative grounds for refusal of the registration of a trade mark. This would only be examined if an interested third party files opposition against the registration within two months from the electronic publication of the trade mark application. Although the bill does not define the “electronic publication”, from the current practice of SOIT it appears that this in fact refers to the online publication of the application on its official website.
Also, the bill expressly provides the possibility of third parties to file observations with respect to absolute grounds for refusal of the registration of the trade mark, within the same two month term.
According to the new bill, SOIT will issue a decision as to the registration of the trade mark after examining the absolute grounds for registration, the possible observations from third parties and oppositions filed by any interested parties. This decision may be appealed by the applicant to the Reexamination Committee of SOIT within 30 days from receipt.
Interested parties no longer have the possibility to file an opposition against the decision of registration issued by SOIT, but may, however, challenge the decision by way of appeal in front of the Reexamination Committee within 30 days from the publication of the registered trade mark. The decisions of the Reexamination Committee are subject to further appeals to the competent courts.
Unlike the legislation in force, the new bill provides the possibility for the trade mark applicant to request SOIT to examine the trade mark application under an expedited procedure, subject to paying an extra fee.
Also, the bill introduces new absolute grounds for refusal (trade marks containing signs that have important symbolic value, especially religious signs and trade marks containing, without the authorisation of the competent authorities, badges, emblems, heraldry and heraldic signs other than those provided by Article 6ter of the Paris Convention), new relative grounds for refusal and for annulment (risk of confusion with a trade mark used abroad (a very broad concept which might give rise to numerous interpretations), if the applicant has acted in bad faith; similarity to a sign used in the commercial activity by a third party, if such sigh confers to the titleholder the right to forbid the use of the later trade mark), identity/similarity with a previous trade mark registered for identical/similar goods or services whose validity term has lapsed and not renewed for no more than two years as of the filing date of the trade mark application if the titleholder of the previous non-renewed trade mark has not given his consent to the registration of the application or has not used his trade mark [without any other distinction] and new concepts such as renowned trade marks.
Certain provisions are drafted in an unclear manner that might give rise to numerous interpretations and possible litigation. For example, SOIT might refuse the registration of a trade mark transfer if the public would be misled (in SOIT’s view) with respect to the nature, quality or geographical origin of the products or services for which the trade mark has been registered unless the beneficiary of the transfer would agree to limit the transfer only to the products or services for which the trade mark is not misleading.
Criminal sanctions for counterfeiting (imprisonment) have been increased and might also be applied to infringement of a Community trade mark. Aside from the irrefutable positive effects deriving from the simplification and shortening of the trade mark registration procedure, if approved in the current form, the new bill is likely give rise to numerous confusions and interpretations, mainly due to the use of new concepts without defining them and to the unclear manner in which new relative grounds for refusing the registration are worded.