Romania's (not so) new trademark law

More than one year has passed since the new trademark law and its implementing regulations came into force, bringing extensive changes and issues. Some of these have been clarified by the implementing regulations, while others have been solved by the jurisprudence, but most of them continue to challenge IP practitioners and owners.

The aim of the new law was to put in place a faster registration procedure while relieving the Romanian Patent and Trademark Office (PTO) of some of its ever-growing workload, by excluding examination on relative grounds and reducing deadlines.

This article looks at whether the goal pursued by the adoption of the new legislation was reached and point out some of the most important issues, some of which are yet to be resolved.

The numbers

The trademark registration process now takes approximately six months. Furthermore, the applicant has the option of choosing an expedited procedure which, for an additional fee, will reduce the examination process to three months.

The goal of reducing the time period required to register a trademark has apparently been reached. Under the old law, this was approximately 12 months. But what about reducing the workload? While it is clear that this has been achieved by eliminating examination on relative grounds, it is just as clear that the number of oppositions has increased drastically, putting a real strain on the examiners.

The second opposition

The new law allows for owners of earlier rights to file an opposition to the publication of a trademark application. This is the first opposition available under the new law. Should the owner of the earlier right not file an opposition after the application is published, the PTO will register the trademark and publish it.

This second publication can also be opposed within 30 days. Although this provision is clearly stated in law, it has left plenty of room for interpretation and has caused controversies. There have been voices, amongst both IP practitioners and within the PTO, who consider that this should not be available to the owners of an earlier right who failed, without grounds, to file the first opposition.

However, at this point, the jurisprudence of the PTO is consistent in admitting oppositions to the second publication.

The provisional protection

The new law grants provisional protection to the trademark application from the date of publication for seven days from the date of application and without being subject to any kind of examination (not even for absolute grounds of refusal).

According to the new law, provisional protection has the same reach as the protection granted to a registered trademark, the only limitation being that any damages granted to the applicant will only be enforceable upon the registration of the trademark.

The introduction of this provision has already resulted in some courts denying preliminary injunctions based on registered trademarks when the presumed infringer was the applicant of a published trademark application enjoying provisional protection. So far, the jurisprudence lacks consistency and it might be some time before this issue finds a unitary resolution.

Bad faith applications

An unwelcome and somehow unexpected (at least for some in the industry) effect of the exclusion of examination for relative grounds of refusal was the dramatic increase in bad faith applications. These applications are testing trademark owners, especially domestic ones that are not accustomed to watching their trademarks.

Fortunately, from the information available to us, IP practitioners have responded well to this phenomenon and most of these applications are being opposed. This phenomenon is being sustained by the fact that the applicant has the option of paying the examination fee after the opposition deadline expires.

At the same time, the owners of earlier rights are required to pay the opposition fee at the time of filing—an opposition fee that, at this point, is not recoverable.

While some of the issues that have surfaced since the new law entered into force have been clarified and others will be solved through jurisprudence, for some issues, the only real option is another legislative intervention.

Dragosh Marginean is a senior partner at Ratza & Ratza in Bucharest, Romania. He can be contacted at: dm@ratza-ratza.com