WIPR Annual 2020 Business Brief: Romania

Ana-Maria Baciu and Andreea Bende of Simion & Baciu outline IP law in Romania.

Patents

National applications secure rights only in Romania and will be granted if they are:

i. New (not comprised in the state of the art);

ii. An inventive step (not obvious to a person skilled in the state of the art); and

iii. Susceptible to industrial application. 

The minimum official fee is Ä600 ($651). Costs of defending patent rights depend on the owner’s overall strategy and the measures adopted.

Information is available on the Romanian State Office for Inventions and Trademarks (SOIT) database featuring national applications, a Romanian online patent database and the online register PATREG (European patents with effect in Romania). 

Patent applications are also published online, monthly, in the Official Gazette.

If the owner fails to pay the annual maintenance fee, third parties can use the invention in good faith or exploit it in the interval between the owner’s loss of rights and the reinstatement of the patent. 

If the invention was insufficiently exploited without justification and if no agreement is reached with the owner, a compulsory licence can be granted by the court after four years have elapsed from the patent’s filing date/after three years have elapsed from its grant date (whichever expires later).

Patent infringements are generally settled amicably but owners can enforce their rights through civil or criminal proceedings and customs actions.   

Trademarks

Romania is a first-to-file, multi-class system, without the requirement of evidence/statements of use at filing/registration. 

Owners are granted exclusive rights over the mark in connection to the goods/services protected for ten years (from filing), extendable for subsequent periods of ten years. 

In enforcing rights, owners may request the court(s)/authorities to forbid third parties from:

• Applying the sign on products/packaging;
• Offering, selling/stocking products for these purposes/offering services under the sign; and
• Placing goods into free circulation, through customs operations, exporting/importing goods. 

Fees depend on the trademark type and number of classes. The minimum official fee for registration (word mark/one class) is Ä200.

Costs for defending rights depend on the owner’s strategy and the trademark’s reputation (requiring additional enforcement actions).

Without customs applications, large volumes of counterfeits are more likely to enter Romania and be placed into commerce via small shops or individuals, making them more difficult to seize.

A “hands-on” defence strategy should include:

• Monitoring and opposing local applications;
• Customs monitoring and monitoring the online/offline marketplace; and
• Responding to seizures and taking action against infringers. 

What are the most common mistakes trademark owners make?

Trademark owners failing to document their trademark use on the market, which would support their claims in active opposition/infringement procedures and defending against non-use cancellations. 

Have there been any changes to the trademark law(s) in the last 12 months?

The legislative proposal amending the Trademarks Law (transposing the EU Directive) is pending before the Senate. It includes:

• Simplification of the registration procedure; 
• Cancellations before the Bucharest Court and SOIT; and
• Eliminating the five-year term after which a mark can no longer be cancelled on absolute grounds.

Are there any nuances in the trademark law(s) that foreign companies should be aware of?

Since examiners do not examine ex-officio applications on relative grounds, it’s recommended that owners monitor local applications. 

Counterfeiting

Romania is an entry point to the EU for counterfeit goods. Customs offices are constantly reporting seizures, from large volumes to small consignments.

Seized counterfeit goods range from spare parts/accessories for the automotive industry, to toys, clothing and fashion goods, tobacco goods, alcohol and cosmetics.

What are the best strategies for dealing with the problem?

• Customs applications for all IP rights; 
• Training of customs and police officers;
• Responding to seizures and bringing civil/criminal action against perpetrators; and
• Monitoring local trademark applications.

How can public-private partnerships to tackle counterfeiting be improved?

Cross-border cooperation, facilitating the rapid exchange of information, improving data collection and sharing best practices. 

Copyright

Copyright does not require registration to be protected. A copyright owner relies on the publicly available data to verify the use of his copyrighted content and to avoid third party infringements.

Other challenges relate to the use of copyright-protected content within digital services, allowing protected works to be publicly available without rigorous authorisation /notification procedures.

Technical measures, such as digital rights management, prove useful in the prevention of infringements, acting against unauthorised redistribution of digital content using code preventing copying for a specific period/limiting the number of devices accessing the content. 

Copyrights are enforced by the courts, the police or the Romanian Copyrights Office/other collective management bodies. 

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

The law was modified in early 2020 on the public reporting obligations incumbent upon collective managements bodies.

Future changes are expected prior to mid-2021 after the transposition of the EU legislation recently adopted. 

Ana-Maria Baciu and Andreea Bende are partners at Simion & Baciu. They can be contacted at: office@simionbaciu.ro