Lack of clarity of draft regulation raises concerns

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Published in “WTR Daily”, October 2010

On August 13 2010 the Romanian State Office for Inventions and Trademarks (SOIT) published a draft regulation for the implementation of Law 84/1998 on trademarks and geographical indications (the Trademark Law), as republished. The draft regulation is due to be approved by government decision.

The draft regulation, which is likely to be amended during the approval process, clarifies certain concepts introduced by the republished Trademark Law, while leaving others to interpretation. For example, a ‘renowned trademark’ is defined as a mark which consumers will have an ‘exceptional knowledge’ of. On the other hand, no clarification was given on the provision of the Trademark Law which states that SOIT might refuse to register a trademark assignment if it is likely to mislead the public.

Moreover, the draft regulation contains several provisions which have – arguably – been unlawfully added to those of the Trademark Law. For example, while the Trademark Law provides for strict time limits, the draft regulation states that an applicant or titleholder which unintentionally fails to observe a deadline in relation to a procedure before SOIT may have its rights re-established, upon request, if it can prove that the necessary due diligence had been performed, but that a fortuitous situation arose. However, the draft regulation does not define what such a ‘fortuitous situation’ might be. Nevertheless, the draft regulation clearly mentions that this exception:

  • can be invoked only if the non-observance of the deadline is not due to negligence on the part of the representative of the applicant or titleholder; and
  • cannot be invoked in relation to the following:
    • the term during which a priority right can be invoked;
    • the term during which an opposition or observations can be filed; and
    • the term during which a response can be filed.

Moreover, in relation to oppositions, the draft regulation introduces the possibility for opponents to request an additional two-month period (from the filing the opposition) to provide a detailed presentation of the grounds on which the opposition is based or, as the case may be, to file the power of attorney. This additional period may be granted only if a supplementary fee is paid.

In addition, according to the draft regulation, any correspondence regarding a trademark application or a registered trademark sent in the name of the applicant or its representative does not have any effects if it is not accompanied by a power of attorney. However, SOIT may grant an additional period of 30 days to file the power of attorney. This additional period was not provided for in the Trademark Law, so may be subject to challenge in the future.

The draft regulation also contains some unclear provisions, for example with respect to the representative of an applicant, titleholder or interested person. The provision at issue states that, if more than one person is mentioned within a power of attorney, only the first person will be considered as the representative. Arguably, this provision is open to interpretation and may give rise to unexpected effects if applied rigidly.

If approved in its current form, the draft regulation might thus have potentially negative consequences resulting from the fact that the newly introduced provisions lack clarity or may be challenged in the future.

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