Bad faith applications in Romania
These are the applications identical or very similar to famous international or local trademarks covering identical or different classes (and sometimes covering all classes).
The new provisions
The new trademark law did away with ex officio examinations for relative grounds of refusal, transferring the duty of trademark watching from the patent and trademark office to trademark owners. This measure was strongly debated before its entry into force because some believed that domestic trademark owners were not prepared to pay the high costs associated with active trademark watching and enforcement.
Under the trademark law, an opposition invitation will be published within seven days of the trademark application’s filing date—this is subject to the payment of filing and publication fees.
Oppositions must be filed within two months, and this deadline is not extendable. On the other hand, the trademark applicant has three months to pay the trademark examination fee. This provision is the most relevant for the present analysis because it is the main reason why so many bad faith applications have appeared.
The effects
This change did not affect large companies in the same way because they already routinely watch their trademarks.
As the majority of Romanian trademark owners do not spend more on IP protection than the cost of registrations and renewals, the new trademark law came as a shock.
The first bad faith applications appeared only a few months after the new law entered into force and their number has increased ever since.
While filing and publication fees can only go up to 110 euro ($160), regardless of the number of classes involved, official opposition fees can vary between 60 euro ($85) for a single class and 1,380 euro ($1,970) for 45 classes. Opposition fees must also be paid at the time of filing. On top of that, the opponent will also have to pay attorney fees.
As examination fees are payable within three months of the application date, bad faith applicants will tend to wait and see whether an opposition is filed before paying them. If an opposition is filed, the application is abandoned. Unfortunately, even in this case, the opponent will not recover its opposition fee.
Measures taken against bad faith applications
The PTO and trademark attorneys have recognised that measures have to be taken to, at least, limit the number of bad faith applications, because they are an unjustifiable burden for trademark owners and they significantly add to the PTO’s workload.
The first option that is being explored and that could be applied in the near future is opposition fee reimbursements. The PTO agrees that, in cases where the application is abandoned, opposition fees (minus a low amount for administrative costs) should be reimbursed.
"IN A NUMBER OF CASES, THE BAD FAITH APPLICANT FILES A NEW, IDENTICAL TRADEMARK APPLICATION IMMEDIATELY AFTER ABANDONING THE PREVIOUS APPLICATION."
Should this measure be adopted by the PTO, trademark owners will have the opportunity to file a formal opposition within the two-month deadline (paying only a fraction of the attorney fees required for a complete opposition), and apply for a two-month deadline extension to allow the opposition to be substantiated and to see if the applicant pays the examination fees.
If the application is abandoned, the opponent will not have to pay attorney fees for substantiating the opposition, which is a reasonable cost cut for trademark owners. But in a number of cases, the bad faith applicant files a new, identical trademark application immediately after abandoning the previous application.
For the time being, trademark owners will have to live with the current situation. Opposition fee reimbursements will be welcome, but they will be more of a treatment than a cure. The only real cure is new legislative change that should combine several measures to ensure that bad faith applications are limited.
