According to Directive (EU) 2015/2436 on harmonising EU member states’ trademark laws, states must transpose the directive into their national laws by January 2019. The exception is for the provisions on the procedure for revocation and invalidity, for which the deadline has been extended to January 2023.
This article deals with the debate among Romanian professionals about whether reintroduction of ex officio examination for prior rights under the law will increase legal certainty and predictability, as the directive aims to.
The current trademark law dates to 2010, when ex officio examination for prior rights was taken out. Prior rights, according to the law, can be invoked only in opposition and cancellation procedures.
After approximately two years, the number of later identical trademarks had risen to the thousands, especially when earlier marks had some degree of recognition, and the majority of applicants for later marks were Romanian nationals.
"Practice shows that very few trademark owners are vigilant about later trademark applications and do not oppose every one that is similar to their registered trademarks."
This is why in the summer of 2012, the manager of the Romanian State Office for Inventions and Trademarks at the time issued an internal regulation (instruction) according to which the examining department was allowed to make ex officio examination of prior rights disguised under the citation of absolute grounds.
The measure was clearly against the law and, as a result, provoked vigorous protests from trademark attorneys and their national chamber. However, despite the protests, the instruction applied until January 2016, when it was formally revoked under pressure from the community.
Elements of a dilemma
Trademark professionals think there may be an opportunity to reintroduce ex officio examination of prior rights, at least for identical trademarks, when the amendments to the law come into force. This situation has the classic elements of a dilemma, namely:
If there is no amendment, the national register will be full of identical marks with different filing dates belonging to different owners. Practice shows that very few trademark owners are vigilant about later trademark applications and do not oppose every one that is similar to their registered trademarks. From what I’ve seen, not even large companies with a significant budget for trademark protection protect all their trademarks. Under these circumstances the mere concept of trademark protection is seriously diluted if the same sign is protected by various unrelated companies in different registrations.
If ex officio examination of prior rights is reintroduced, pre-2010 practice shows that a significant number of later applications can be denied registration due to the existence of dormant marks or, even worse, ‘dead’ marks for which the proprietors no longer exist and where there was no assignment.
The solution of informing the owners of prior rights about the publication of later marks proved to be inefficient because of many hurdles such as:
Notifications issued by the IP office are in Romanian, so when they are sent to foreign companies the businesses have to translate them;
These notifications are being sent to companies, not to the trademark attorneys’ firms, making the chain of communication longer; and
The time to lodge an opposition is only two months from the date of publication of the application, and by the time the owner of prior rights has learned about the later mark, usually the deadline has passed or only a few days are left.
Fewer than 10% of the total oppositions instructed to our office belong to this category, which demonstrates that the measure of informing prior rights owners is inefficient.
In my view, a way to overcome the dilemma may be to reintroduce
ex officio examination of prior rights for identical marks while establishing some clear rules that aim to eliminate as much as possible dormant or dead marks that become bars to registration for later applications.
The internet makes it easier today to collect evidence about marks and companies, and therefore it may be a good idea to use it for this purpose.
As a professional involved in trademark work daily, I look forward to the challenges of the future amendments to our trademark law.
Raluca Vasilescu is a patent and trademark attorney at Cabinet M Oproiu. She can be contacted at: firstname.lastname@example.org
Raluca Vasilescu, Cabinet M Oproiu, ex officio, trademark, prior rights, Romanian State Office for Inventions and Trademarks,