Romania's new trademark law

On 9 May 2010, a new Trademark Law will enter into force in Romania. The main provisions are outlined below.

Waiving of the ex officio examination for prior rights

The old law provided for ex officio examination on both absolute and relative grounds. According to the new law, the examining division will only carry out examinations on absolute grounds. Relative grounds, such as conflicts with earlier rights, will only be invoked in opposition and cancellation proceedings.

Clearer definition of earlier rights

The new law clarifies the earlier rights on which an opposition or a cancellation proceeding can be initiated, including:

• Community trademarks (CTMs) are included explicitly as earlier rights. There is a new category of CTMs, namely those registered for dissimilar goods/products where the CTM enjoys a reputation in the EU and, by using the later mark, its holder would unduly profit from the distinctive character or reputation of the CTM

• Earlier marks registered in Romania for dissimilar products, where the earlier mark “enjoys fame” in Romania and, by using the later mark, its holder would unduly profit from the distinctive character or the reputation of the CTM. In the old law, a similar provision applied to “famous marks”

• Three new types of earlier rights have been introduced:

• Unregistered marks or any other signs used in commercial activity acquired before the date of deposit of the later mark, if that unregistered mark or sign confers the holder the right to prevent the use of the later mark

• Marks that have already expired at the date of deposit of the later mark: a collective mark that has expired within the last three years, or a certification mark that has expired within 10 years, or an individual mark that has expired within two years

• Marks that were used in a foreign country at the date of deposit of the later application and still continue to be used, where the later mark could be confused with the earlier one and the registration of the later mark was in bad faith.

Shorter deadlines in opposition and appeal proceedings

The new law distinguishes between an opposition (based on relative grounds) and an observation (based on absolute grounds).

According to the new law, the deadline for filing an opposition or observation is within two months of the publication date of the application, compared with three months under the old law.

The deadline for the applicant to respond to the opposition is 30 days, compared with three months under the old law.

For appeals at the Romanian Patent Office, the new filing deadline is 30 days, compared with three months under the old law. It is expected that it will be possible to file a motivation up to the first hearing, pursuant to the provisions of the Code of Civil Procedures.

Clarifications in respect to the use requirements

The new law brings new requirements regarding the use of a trademark, such as:

• It is no longer possible to request cancellation of a later mark based on grounds of conflict with an earlier mark, if the earlier mark is not used (the conditions of use are detailed in the new law)

• In case of lodging a request for exhaustion of rights of the owner of a mark that has not been used for a continuous period of five years, this period commences on the date the mark was entered into the National Registrar.

Mutual tolerance between later and earlier marks

According to the old law, the holder of an earlier mark who knowingly tolerated the use of a later mark for a continuous period of five years could neither request cancellation nor oppose the use of the later mark for the products and services for which the later mark was being used, except if the later mark was sought in bad faith.

The new law maintains this provision, but adds that: “The holder of the later mark cannot oppose the use of the earlier mark, although the latter can no longer be invoked against the later mark.”

The Implementing Regulations are expected to be published at a later date. Once these are available, there may be more information on the practical aspects of prosecuting marks under the new Trademark Law.

Raluca Vasilescu is a patent and trademark attorney and partner at Cabinet M. Oproiu. She can be contacted at: raluca@oproiu.ro