Business brief 2012: Romania

Patents

How do you register or secure patent rights, and is national or international coverage most appropriate?

In order to secure exclusive patent rights in the Romanian territory one can apply for a national patent before the Romanian State Office for Inventions and Trademarks (SOIT), either by filing a national patent application or by entering the national phase of an international patent application (PCT application).

European-granted patents designating Romania can be validated by submitting the Romanian translation of the entire patent specification to SOIT.

Depending on the territories of interest for protection for the patentee and also on its financial strength, national and international patenting routes may both be considered.

What are the costs of obtaining and defending a patent?

The official fees for obtaining a Romanian national patent on the basis of a national patent application, or on the basis of the national phase of a PCT application, including the filing, claiming priority, publication, examination and grant fees, are approximately €550 for an application with 20 pages and five claims. Counsel fees and possible translation costs should be added.

The official fee for validation of a European patent in Romanian is €110, to which are added the translation cost and the counsel fees.

The costs for defending a patent depend on the nature of the litigation.

Where can you find information on existing patents in your jurisdiction?

SOIT has an online patent database at http://bd.osim. ro/cgi-bin/invsearch8, including information about national patents. Also, upon payment of certain official fees, SOIT offers information about national patents or European-granted patents designating Romania.

Is there anything unusual about the patent law that companies should be aware of? What are the most common mistakes businesses make?

The applicant for a European patent should consider that provisional protection can be obtained in advance of the grant of the European patent by the European Patent Office (EPO), by filing the Romanian translation of the claims with SOIT, as published by the EPO.

Romanian patent law has special provisions covering inventions developed by employees or under research agreements, as well as in relation to technical realisations and inventions developed by a Romanian natural person on the Romanian territory.

What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?

Patent infringement, especially in areas of importance such as pharmaceuticals, is a key threat to patent owners. In accordance with Romanian laws currently in force, a patent owner may apply for a preliminary injunction in order to prevent an alleged infringer continuing the infringement of his patent. Nevertheless, if the action on merits is rejected, damages may be claimed by the alleged infringer for the incurred prejudice.

The best strategy in a case of suspected infringement is to consider the strength of the patent and, as a first step, to consider solving the matter in an amicable manner.

Have there been any changes to the patent law in the last 12 months?

No, but changes are expected in relation to employee inventions.

Trademarks

How do you register or secure trademark rights and what protection does it grant?

As a rule, according to Romanian trademark legislation currently in force, in order to secure trademark rights the applicant has to file the trademark for registration with SOIT. The Romanian trademark legislation also recognises the protection of notorious trademarks, which do not need to be registered.

The registration of the trademark gives an exclusive right to its owner.

What are the costs for registering and defending a trademark?

The official fees for registering a national individual verbal trademark in one class (in relation to which no priority is invoked) are currently €200, while for a combined individual national trademark (verbal + figurative element) in one class in black and white (in relation to which no priority is invoked) are currently €230, to which counsel fees will be added.

The costs for defending a trademark depend on the nature of the litigation.

What are the key threats to trademark owners and what is the best strategy for dealing with infringement?

Counterfeiting, online infringement, and registration of similar/identical trademarks are some of the key threats to trademark owners. The best strategy for dealing with infringement is to try to prevent it, and if it has occurred to take immediate actions, eg, by having a service of trademark survey (internal or outsourced), sending cease and desist letters, filing oppositions to the registration of similar/identical trademarks in due time, filing applications for customs intervention on IP rights with the appropriate customs authorities, effectively using the trademarks for the goods and services for which such is protected, etc.

What are the most common mistakes trademarks owners make?

Common mistakes are non-renewal of the trademark in due time, not having a service of trademark survey (internal or outsourced), non-use of the trademark, not protecting the trademark by registration in the territories that present interest for them, etc.

There been no changes to the trademark law in the last 12 months.

Copyright

What are the key challenges to copyright holders in your jurisdiction?

Large scale piracy, and still incomplete functioning of the collective rights management system are some of the key challenges to copyright holders in Romania.

How should people ensure they are protected against copyright infringement?

According to Romanian copyright legislation, an original work is protected by copyright as of the moment of its creation. There is no registration system for securing protection by copyright.

What is the best way to deal with infringement and what are the costs associated with it?

The titleholders have to be very active in defending their rights, eg, sending cease and desist letters, filing legal actions against counterfeiters including criminal complaints, instituting technical measures for protection of their rights by using any technology, device or component that can impede or limit the non-authorised use (eg, by implementing a code of access or a protection process such as encryption, coding, jamming, etc), granting a mandate to collective management bodies in relation to rights that are not mandatory collectively managed, etc.

The costs depend on the measures taken.

Has there been any change to the copyright law in the last 12 months?

The Romanian copyright law has been slightly modified in the last 12 months due to the entry into force of the new Romanian Civil Code.

Counterfeiting

How big a problem is counterfeiting in your jurisdiction?

Counterfeiting represents a problem in Romania but, in general, the authorities are very active in fighting against it.

What industries are particularly at threat?

Most industries are affected by counterfeiting in Romania. Some examples are the food industry, tobacco, cosmetics, media, clothing, footwear, toys, pharmaceuticals, spare parts, software, etc.

What are the best strategies for dealing with the problem?

Titleholders have to be very active in defending their rights, eg, sending cease and desist letters, filing legal actions against counterfeiters including criminal complaints, filing applications for customs intervention on IP rights with the appropriate customs authorities, etc.

General

Are there any legislative changes to the IP regime that would make life easier for businesses?

A legislative change to the functioning manner of the collective management bodies is one change which might improve things.