Changes in the application of the trademark law

Two years after the new Trademark Law came into force, the State Office for Inventions and Trademarks (OSIM) considers that some changes to the trademark registration procedure are in order, based on its practical experience.

Consequently, OSIM has issued a set of instructions that are meant to resolve some of the issues that the office has been confronted with in the past couple of years. The instructions have been the subject of a seminar organised by OSIM with the declared purpose of gathering feedback from the other stakeholders involved in the trademark registration process.

It appears that the major problem the OSIM seeks to address with these new measures is the issue of bad faith trademark applications.

The new Trademark Law excluded ex officio examination for relative grounds of refusal. At the same time, the new Trademark Law provided for the immediate publication of a trademark application based only on a preliminary formal examination and the payment of a relatively low official fee. Furthermore, the publication of the application grants a provisional protection for the applicant.

This new procedure has resulted in a considerable number of bad faith applications that are identical or similar to well-known trademarks. Some of these applications have eluded the watching systems of the rightful owners and have been registered. Subsequently, these cases found their way into court and sometimes to the press.

To combat this, the first measure that OSIM will take is to conduct an identity search for each trademark application and compile a report from the results of this search. According to the instructions, the search should be conducted in all three registers containing trademarks valid in Romania (national, international and Community trademarks). The search report will be sent by the office to the applicant and also to the owner(s) of the earlier rights contained in the report.

The procedure for transmitting the search report and the language thereof have yet to be determined; for the time being, the office is considering sending the report only to the owners of the prior national trademarks in the search report.

"THE SOLUTION PROPOSED BY THE OFFICE IS TO PROCEED WITH THE EXAMINATION OF THE TRADEMARK APPLICATION (INCLUDING ANY POTENTIAL OPPOSITIONS) EVEN IN THE ABSENCE OF PAYMENT OF THE EXAMINATION FEES."

The next measure contemplated by OSIM pertains to the deadlines set by the new Trademark Law for the payment of various fees. The office has observed that these provisions are enabling bad faith applicants purposely to prolong the proceedings while waiting to see whether an opposition will be filed and while enjoying the advantages of the provisional protection granted by the publication of the trademark application.

The solution proposed by the office is to proceed with the examination of the trademark application (including any potential oppositions) even in the absence of payment of the examination fees. This will put the office in the position of rapidly issuing a decision regarding the trademark application as soon as the six-month deadline to pay the examination fees has elapsed.

Should all the above measures fail to deter the bad faith applicants, the office declared itself willing to take one further step and, in cases where there is obvious bad faith on the part of the applicant, the office will ex officio reject the application.

In order to justify such a decision, the office will consider that a sign which is identical or highly similar to another earlier trademark cannot be registered because it lacks the capacity of distinguishing the goods or services of one undertaking from those of another. In other words, OSIM will consider such a conflict as an absolute ground of refusal and therefore reject the trademark.

We are undecided as to the efficiency and legality of these measures. This interpretation of the law has been received with a lot of reservations by the other stakeholders since it is very unlikely that a decision based on the above reasoning will stand up in court once it is contested by an interested party.

The conclusion of the seminar and the discussions between OSIM and the stakeholders was that, regardless of the results of the proposed measures, the modification of the Trademark Law is a necessary step that should be undertaken sooner rather than later.