Romania: Best practice for Romanian filings

Romania has a longstanding commitment to protecting IP rights, with the first regulation on trademarks and service marks dating back to 1879. In addition, Romania has been a member of the Paris Convention for the Protection of Industrial Property since 1920.

Romania is a first to file jurisdiction. Intent to use is not required; nor is prior use – except where the mark is refused for lack of distinctiveness, in which case the applicant must prove acquired distinctiveness through extensive use (ie, secondary meaning).

According to the Trademark Law, any sign that can be graphically represented and that distinguishes the goods or services of one party from those of others can be registered. Signs that can be registered include words, names, designs, devices, letters, figures, three-dimensional forms (eg, shapes), colours, colour combinations or a combination of any of the above.

General filing requirements

When applying to register a trademark, an applicant must provide the following:

• power of attorney, which must be translated into Romanian (this may be filed within 30 days, subject to a nominal fee);
• priority documents and Romanian translations of these if the applicant intends to use the priority of an earlier application; and
• exhibition documents and Romanian translations of these if the applicant intends to use the exhibition priority – such documents should be issued by the exhibition organisers.

Official costs, timing and classifications

The registration procedure is generally smooth and usually takes between nine and 12 months, provided that there are no problems with the application. Official fees applied by the Romanian Patent and Trademark Office (RPTO) range from €200 (for a single class, monochrome word mark application) to €310 (for a single class colour device application).

Romania uses the Nice Classification and Vienna Classification (for devices). Class headings and multi-class applications are accepted. However, indicating the specific goods or services in the application is highly recommended; this will reduce the likelihood of the application being opposed by third parties and will make it easier to limit the scope of the application should there be a problem with any of the goods.

Opposition, challenge, cancellation and enforcement

Oppositions may be filed against a trademark application by holders of earlier IP rights (whether registered or unregistered) within two months of publication of the application in the Official Journal. The applicant may request that the opponent file proof of genuine use in Romania – or elsewhere within the European Union in case of a Community trademark. Failure to provide proof of genuine use will lead to the opposition being denied and the registration process will continue.

Oppositions are usually decided within six to 12 months by way of a recommendation issued to the examiners, although in practice considerable delays can arise at the RPTO. The outcome of an opposition will lead to a trademark being registered or refused. The applicant or opponent can challenge the decision within 30 days.

The 2010 Trademark Law was amended to allow any interested third party to challenge registration decisions; this has led to situations where third parties are challenging RPTO decisions on the registration of a trademark without having filed an opposition during the application process. This situation has been criticised, as it prolongs the uncertainty of a trademark’s registrability even after the RPTO has decided on registration.

Trademark cancellations are available through court proceedings. In addition to non-use (for five consecutive years), cancellation may be requested on absolute grounds (ie, descriptive, generic or functional) or relative grounds (ie, likelihood of confusion, priority, bad faith, well-known or famous marks). Grounds for cancellation are more or less the same as in other EU jurisdictions.

Romanian legislation typically provides effective enforcement tools – including preliminary injunctions, seizures and other preliminary measures – for rights holders following harmonisation with EU regulations.

New internal regulation at RPTO

In July 2012 the RPTO adopted a new internal regulation which introduced a new examination procedure.

A preliminary examination at the RPTO must now proceed to a search of various databases in order to identify any identical trademarks that have been registered for identical or similar goods or services. These include:

• the RPTO internal database;
• the Office for Harmonisation in the Internal Market (OHIM) database; and
• ROMARIN – the World Intellectual Property Organisation (WIPO) database, which contains information on all international marks recorded under the Madrid system (for trademarks designating Romania).

The results of such searches are included in a report which is distributed to both the applicant and the owner of the prior identical mark(s).

The industry opinion on this new system is mixed – while some practitioners have questioned whether this is a return to ex officio examination on relative grounds (which was abandoned by the RPTO in 2010 when the new Trademark Law was adopted), others believe that this preliminary report represents a quality standard and cannot be compared with the previous procedure, since it does not end with a provisional refusal.

There has been a certain degree of confusion among rights holders which have received a report from the RPTO without any explanation – Romanian attorneys had had to explain that it represents a proactive attempt on the part of the RPTO to generate additional revenues, as well as to keep rights holders updated about new trademark applications.

Statistics and plans

According to RPTO officials, the number of new trademark registrations has fallen by approximately 20% to 30% in the past couple of years, mainly due to the financial crisis and as a result of an alternative registration procedure offered by OHIM to cover Romania, as part of the European Union.

However, the number of renewals has increased slightly, which shows consistency in terms of protection sought by rights holders already registered with the RPTO.

Romania joined TMView – a free search tool covering data from all participating official EU trademark offices – in January 2012. The RPTO intends to launch an online trademark registration system in 2013.

Clearance

Many rights holders rush to register their chosen marks with the RPTO. This is not advisable, as failure to conduct proper searches may lead to oppositions and other actions initiated by third parties, and unnecessary and unexpected related costs.

Therefore, full trademark searches should always be conducted. These should not be limited to the official databases (eg, RPTO, OHIM and WIPO), and should include identical or similar well-known marks (which may or may not be registered) and other IP rights, such as trade names.

Trademark searches are designed not only to avoid potential conflicts with earlier registered or unregistered rights, but also to highlight earlier rights which may considerably limit the exclusive rights of the proposed trademark, even if such rights are unlikely to be raised in opposition.

A search of the RPTO’s official database (available online) should always be supplemented by independent searches of other relevant databases and those conducted via the Internet and social media networks.

Best practice

The following tips are offered as best practice for trademark registration in Romania:

• Always register a trademark first before publicly disclosing it and obtain clearance before filing.
• Select a suitable brand name to be registered as a trademark – the stronger the trademark, the more powerful its protection will be.
• Beware of generic or descriptive terms – although they might sound attractive to consumers, they are likely to trigger disclaimer requests or simply be refused. If registration is eventually obtained, such terms could easily be adopted by competitors.
• For long-term strategies (ie, more than five years), select only the goods and services that will be used or that are complementary to those that will be used.
• Define your strategy with respect to the territories in which the trademark will be used and carefully balance the advantages/disadvantages of a Community trademark with respect to the European Union.
• Constantly monitor the market for identical or similar trademarks.
• Oppose any trademark application which represents a threat to IP rights within two months of publication.
• File for the cancellation of identical or similar trademarks within five years.

 

Dragos M Vilau
Partner
[email protected]

Dragos M Vilau is one of the founders of, and coordinates the trademark, copyright and data protection practice groups at, VILAU | ASSOCIATES. He is a member of the Bucharest Bar Association, the International Trademark Association and the Pharmaceutical Trademarks Group. He has been involved in numerous cases before the Romanian courts.