Code reform in Romania

The word ‘reform’ has been on the lips of everyone in the legal field in Romania for some time now, but never more so than in recent years when modifications to the most important pieces of legislation have entered their final stages. The new Civil Code entered into force (partially) on October 1, 2011, and the new Civil Procedure Code is set to enter into force on June 1, 2012, while the Penal Code and the Penal Procedure Code will come in during 2013.

Modification of the IP laws

When the Civil Procedure Code comes into force in June, all the intellectual property laws will be modified with respect to the way decisions of the Romanian patent and trademark office (OSIM) will be contested before the courts of law, and to the provisional measures available in case of an infringement.

Under the current legislation, OSIM’s decisions are appealed before the Bucharest Municipal Court within 15 days of the communication date. The procedure before the court is considered an appeal and therefore is heard by a panel of two judges. The decision of the court is subject to a second appeal before the Bucharest Court of Appeals. This second appeal must be filed within 15 days of the communication date and is heard by a panel of three judges. The decision of the Court of Appeals is final.

According to the new provisions, OSIM’s decision is to be contested before the Bucharest Municipal Court within 30 days of the communication date. The procedure before the court will no longer be treated as an appeal, and will be heard by a single judge panel as a contested decision. The court’s decision will then be subject to an appeal that should be filed within 30 days of the communication date. The appeal will be heard by a panel of two judges, whose decision will be final.

The second important modification to be introduced in the industrial property laws refers to the provisional measures the court can order at the request of the rights holder in case of an infringement.

Currently, each industrial property law has different stipulations with respect to the provisional measures available. When the changes come into force, all these laws will have identical provisions, imposing identical conditions for the ordering of provisional measures.

At first glance, these new conditions do not depart significantly from the current legislation. However, terminology that is slightly different from that used in the current legislation might cause some interpretation issues, especially at the early stages of implementation.

For example, the current legislation established as a condition for the ordering of provisional measures the existence or imminence of “irreparable harm”.

The new provisions talk about a “difficult to repair prejudice”. While the first notion has been used for a long time in the Romanian legal system and its meaning has been established by extensive doctrine and jurisprudence, the new notion of a “difficult to repair prejudice” has not been used in the past and will definitely be a cause for debate and controversial interpretations once it comes into force.

“The new provisions appear to favour the rights holders, since the conditions set forth by these seem to be easier to fulfil than the current legislation.”

Furthermore, this new notion is not used in the general stipulations for provisional measures in civil procedures, where the old concept of “irreparable harm” will continue to be used, which raises some questions as to the intention of the legislator and whether this provision was meant as a special condition, or is just a result of a faulty translation and implementation of the enforcement directive.

The new provisions appear to favour the rights holders, since the conditions set forth by these seem to be easier to fulfil than the current legislation. However, one must consider that the provisional measures are exceptional, and that the conditions set out in the legislation for the ordering of such measures are meant to ensure a balance between the rights of the parties in the absence of a court decision on the merits of the case.

The answers to all these questions will be brought about only by jurisprudence and, at least to some degree, by the relevant doctrine, which means that answers will not be available for at least a year or more, when we will have the first final decisions in relevant cases.

Modifications of Ordinance 100/2005

The law implementing the new Civil Procedure Code will bring important modifications to Ordinance 100/2005, implementing the provisions of the Enforcement Directive (Directive 2004/48/EC) in Romanian legislation.

According to these new provisions, the entire chapter regarding the provisional measures will be deleted from the ordinance. All the relevant provisions will now be included in a special section of the new Civil Procedure Code entitled ‘Provisional measures in the field of IP rights’.

This new section contains provisions that use the same terminology as the provisions introduced in the industrial property laws mentioned above, which will cause the same interpretation issues.

Furthermore, special conditions are set in case the infringement is undertaken using mass media, in which case provisional measures will be ordered only if an extremely grave prejudice is suffered by the rights holder.

The question of security is also addressed differently. According to the current provisions the rights holder is required to post a security when requesting a provisional measure, but the new conditions state that the court “may” request the rights holder to post a security.

The rights holder can request the court to release the security if the defendant has not requested damages. The defendant can oppose the release of the security, in which case the court will set a deadline that cannot exceed 30 days for the damages claim to be filed.

Also, a fixed period of 30 days is set for rights holders that have requested provisional measures to file infringement actions. Otherwise, the provisional measures automatically cease.

The rights holder will have to repair any damage caused to the defendant if the infringement action is rejected. However, if the rights holder has not intentionally caused the damage, the court can reject a claim for damages, or at least limit the amount of damages awarded.

It appears that the legislator has attempted a somewhat different implementation of the provisions of the enforcement directive than the ones currently made by Ordinance 100/2005. Whether the desired effect will be accomplished remains to be seen.

The law implementing the new Civil Procedure Code is still being discussed in parliament at the time of writing. Since the procedure is moving along slowly it is possible that the new code will not enter into force at the expected date. In any case, it is certain that sooner or later it will come into force and most likely, although modifications are still possible, it will contain the provisions discussed above.