July 13, 2020 - New Trademark Law enters into force
- the law implements the EU Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015
- sound marks are now explicitly regulated by the law
- designations of origin are included with geographic indications as absolute grounds for refusal
- designations of origin and geographic indications can also be invoked as prior rights in an opposition
- the application’s list of goods/services must be sufficiently clear in order to allow all parties to determine the extent of protection, in accordance with the Nice Classification and the IP Translator decision, under the penalty of refusal of the application
- holders of already registered trademarks covering class headings, can file a declaration until September 30, 2020 specifying that the list of goods/services extends beyond the literal sense of the goods/services should said goods/services be from the alphabetic list of the Nice Classification edition as of the filing date of said trademarks
- should such a declaration not be filed, said trademarks shall be construed to be registered for the goods/services included in the literal sense of the class heading formulations
- the priority is invoked by way of the trademark application and the priority documents must be filed and fees must be settled within 30 days as of the application date
- the examination fee for a trademark application must be settled within 30 days as of the application date
- the PTO proceeds with a formalities examination of the application within 7 days as of the application date, and should the conditions be met, grants an application date. Should the conditions not be met, the PTO shall notify the applicant who shall have 30 days to supplement the application, under the penalty of refusal
- the PTO shall electronically publish the application within 7 days as of the application date (the first publication) – opening a 2 months term for observations on absolute grounds for refusal
- Should the application not meet the required criteria, the PTO shall notify the applicant who shall have 30 days to supplement the application, under the penalty of refusal
- the PTO shall examine the application on absolute grounds for refusal and issue a decision within 6 months as of the publication date
- should the application pass the ex officio examination, the PTO shall accept it to registration and publish it for third party oppositions based on relative grounds for refusal (the second publication)
- should the trademark be refused based on absolute grounds, the applicant shall have a 30 days term to file its response, term that can be extended with another 30 days term.
- The term for filing oppositions is two months as of the publication
- the opposition procedure begins with a cooling off period of 2 months, which can be mutually extended with up to three months
- should the parties not settle, the opponent is given a 30 days term to file arguments and evidence in support of the opposition, and the applicant has 30 days to file arguments in reply and request proofs of use; the opponent is given 2 months to file proofs, which are communicated to the applicant who is then given 30 days to respond thereto
- the opposition can be suspended should the prior rights be uncertain (not registered yet, pending cancellation) and the decision to suspend shall be communicated to the parties, who can appeal it within 30 days as of communication.
- The PTO shall make a decision on the opposition within 2 months as of the finalization of the adversarial proceedings
- once the opposition proceedings are final, or the term for filing opposition has lapsed, the applicant is notified thereon and can request the issuance of the certificate of registration within 30 days as of the notification; once the certificate is issued, the trademark registration is published in the Trademarks Gazette (the third publication)
- as of the entry into force of the law, all applicants with trademarks for which a decision of acceptance was issued, but for which the certificate of registration was not requested must request the same within 30 days under the penalty of the trademark being cancelled.
- The trademark renewal request can be filed by the holder, or by any authorized person, whereby by law or by contract, a the most 6 months before the expiration term
- The PTO shall notify the holder on any irregularities of the renewal application and the holder shall have 30 days as of communication to respond
- The holder can always request non-essential amendments to the trademark; the list of goods/services cannot be extended
- Use of a sign as a commercial name can constitute infringement
- Use of a sign in comparative advertising can constitute infringement
- Use of labels, tags, security or authenticity features or devices, or any other means to which the trade mark is affixed, can constitute an infringement, including the import thereof
- bringing goods, in the course of trade into Romania, without being released for free circulation here, where such goods, including the packaging thereof, come from third countries and bear without authorisation a trade mark which is identical with the trade mark registered in respect of such goods, or which cannot be distinguished in its essential aspects from that trade mark can constitute infringement.
- The defendant in an infringement action can request proof of use of the trademark and should the plaintiff fail to file such evidence, the action is rejected
- the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference work, in print or electronic form, gives the impression that it constitutes the generic name of the goods or services for which the trade mark is registered, the publisher of the work shall, at the request of the proprietor of the trade mark, ensure that the reproduction of the trade mark is, without delay, and in the case of works in printed form at the latest in the next edition of the publication, accompanied by an indication that it is a registered trade mark.
- Should a trademark be registered in the name of the representative, the holder is entitled to oppose the use of the trademark by the representative or to request its assignment; the request for assignment shall be filed in lieu of a cancellation action
- A trademark holder can act against infringement only further to the publication of its trademark as a registered trademark (the third publication)
- The trademark holder cannot request a third party to be prohibited from using in its commercial activity: the name and address of the third party, if it’s a natural person; signs or indications that are not distinctive and concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; the trademark or the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of the trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts
- The rights over the trademark can be transferred by assignment, license, merger, by succession, based on a court decision or by any other means provided by law for the transfer of ownership
- The assignment must be made in writing and signed by the parties, under penalty of nullity, unless it is derived from a court order or as part of a contractual obligation
- Should the assignment request not meet the required conditions, the PTO shall notify the party, which shall have 30 days as of the application date to amend the request
- A trade mark can, independently of the undertaking, be the subject of a right in rem or be the subject of enforcement measures.
- In the event that real guarantees or enforcement measures are registered in the Trademark Register, the withdrawal of the trademark can be recorded only with the consent of the beneficiary of the guarantee or after the deregistration of the enforcement measures.
- The cancellation or infringement action based on a prior trademark cannot be accepted had it not been accepted at the date of filing/priority of the later trademark/sign due to the prior trademark’s lack of distinctive character, lack of sufficient distinctive character to lead to a likelihood of confusion or lack of reputation at that prior point in time
- Cancellation actions can be filed before the Bucharest Municipal Court or, as of January 14, 2023 before the PTO,
- The defendant in a cancellation action can request the proof of use of the prior trademark, and should the plaintiff not file such evidence, the action is rejected
- The cancellation actions filed before the PTO shall be judged by a PTO Board specialized in cancellation actions formed of 3 members with juridical experience and who had not taken part in any administrative proceedings concerning the trademark in question
- The Board’s decisions shall be communicated within 3 months from the decision date and can be appealed before the Bucharest Municipal Court within 30 days as of communication; the Court’s decision can only be appealed before the Bucharest Court of Appeals
- The applicants of a collective mark can be associations of manufacturers, producers, service providers or traders who, in accordance with the applicable legislation have the capacity, in their own name, to hold rights and obligations, to conclude contracts or to draw up other legal acts and to stand trial, as well as legal persons under public law
- The examination for absolute and relative grounds for refusal concerning individual trademarks is applicable to collective marks as well
- In addition to the cancellation grounds concerning individual trademarks, collective trademarks can be cancelled if the holder used the mark in conditions other than those provided for in the regulations or, as the case may be, in its amendments entered in the register or has not taken appropriate measures to prevent such use; the way the trademark was used lead to the possibility of misleading the consumer public or the amendment to the regulations was made in violation of the provisions of the law
- Certification trademarks can be filed by any natural or legal person, including institutions, authorities and bodies governed by public law, provided that those persons do not carry out an economic activity involving the provision of products or services such as those certified.
- The certification trademark shall not be granted should the applicant not have the competence to certify the goods/services the trademark shall be used for
- The examination for absolute and relative grounds for refusal concerning individual trademarks is applicable to certification marks as well
- A European Union trademark application or a European Union trademark can be transformed into a national trademark application under the conditions of art. 139-141 of the Regulation on the European Union trademark, with the payment of fees for the procedure for examining a national application provided by law; the PTO shall notify the applicant on the requirements of the transformation and grant a two month term from the notification date
- In order to execute EUIPO’s decisions in Romania, the executors according to art. 110 para. (1) of the Regulation on the European Union trademark, the verification of authenticity is within the competence of the Bucharest Municipal Court
- The PTO decisions can be appealed before the office within 30 days as of communication subject to an official fee
- The Board of Appeal’s decisions shall be communicated within 3 months as of their making and can be appealed within 30 days before the Bucharest Municipal Court, and further appealed before the Bucharest Court of Appeals
- For proceedings before the PTO, the parties or their representatives must provide an address for procedural communications
- The pending trademark applications shall follow the provisions of the law in force as of the moment of their filing
December 28, 2017 - Registration and yearly maintenance fees for “.ro” domain names to enter into force as of March 01, 2018
Following consultations with partners and in order to align to the European practices, ICI ROTLD will enforce registration and yearly maintenance fees for “.ro” domain names starting with 2018.
The policy was adopted for a number of reasons, namely:
• Aligning with European practice, as currently, Romania is the only country in Europe that has not introduced an annual maintenance fee for domains;
• Compliance with the best practices and recommendations from ICANN;
• Providing the funds necessary to scale the IT infrastructure and increase security and reliability;
• The possibility of unlocking the “.ro” domain names that have been registered during nearly 25 years of “.ro” domains and are no longer in use;
• Acquiring the necessary resources for maintaining a large database of domains;
• Strengthening the security and stability of the ROTLD service, given that the virtual environment is increasingly aggressive over the Internet.
As a consequence, as of March 01, 2018 “.ro” domain name holders will have to pay a maintenance fee for a period of time between 1 and 10 years. The renewal fee will be of EUR 12 / year, plus VAT.
The domains' expiry date will be calculated taking into account the principle that the old registration fee should cover at least 5 years of maintenance. As such, domains registered before March 01, 2013 will receive a grace period of minimum 3 months in order to pay the maintenance fee, so that first domains will expire on June 01, 2018. In case of domain name transfer, the 5 year term shall begin from the transfer date, i.e.: if the domain was registered on January 01, 2015 and it was not transferred to a third party, the domain will expire on January 01, 2020; if the domain was registered on January 01, 2015 and ownership was transferred to a third party on January 01, 2017, then the domain will expire on January 01, 2022.
If the resulting expiration date falls before June 01, 2018 (i.e.: the domain registered on January 01, 2010 would have the expiration date January 01, 2015), calculation of the date when the domain expires will take into account the registration date and month, with a grace period of upto 6 months depending on the month of registration, i.e. for domains where the registration or transfer occurred in January or February, the expiration date shall be in June 2018; for domains where the registration or transfer occurred in March or April, the expiration date shall be in July 2018, etc.
The 6 months grace period is meant to allow domain holders to renew their domains.
A simulator to determine the domain name expiration date can be found here: https://forms.rotld.ro/simexpdate/
Update of January 27, 2017 - Order cancelled, will be rediscussed in Autumn 2017
December 30, 2016 - RoTLD announced the introduction of the annual registration and maintenance fee starting with July 01, 2017
Romania is the last European country to enforce the annual fee, adhering to the European Commission document from 2000 concerning the speculative and abusive “.ro” Internet domain name registration. The new fee will unblock the “.ro” domain names that were registered as early as 1993 and that are currently not in use. The registration fee for a “.ro” domain name shall cover both the registration fee as well as a 5 year use fee for the domain, further to which a RoTLD reference amount shall be paid. According to the RoTLD announcement for “.ro” domain names registered before July 01, 2012, the right of use holders have the obligation to settle the annual maintenance fee between July 01, 2017 and October 01, 2017. For “.ro” domain names registered during the period July 01, 2012 – July 01, 2017, the annual maintenance fee shall be settled when the right of use of the “.ro” domain name reaches 5 years as of registration date. RoTLD inner sources mention a fee of 50 Euro + VAT for the registration of a domain name and a fee of 118 Euro + VAT for the 5 year maintenance, further to which the annual fee is going to be 9.90 Euro + VAT. New fees for domain name inspection and identification, domain name transfer and search in RoTLD databases shall be further announced.
The ".ro" domain name Registry shall implement a renewal fee
So far, the ICI - RoTLD registry did not provide maintenance fees for the ".ro" domain names, the registrants paying a one time registration fee only. As such, for a modicum sum of 51.25 USD plus VAT, anyone could register a domain name for an undetermined period of time.
There are several reasons for which such a maintenance fee shall be enforced in the near future, including for cluttering the registry with unused domain names. The government decision proposal provides that for existing domain names, the fee shall be due as of the moment the domain name has been registered for 24 months. The amount thereof was not yet set, as it shall be settled by ministerial decree. The renewal shall be annual, the option of settling the fee for two years being provided as well.
The measure is most welcome, as far as minimum control over the number of valid domain names is concerned, as currently over 700.000 such domain names are registered.
The New Customs and IP Enforcement Regulation is shaping up
The beginning of 2013 came with fresh news for the intellectual property owners and not only. Thus, on January 10, 2013 the European Council and Parliament published the proposed text of the Regulation that is going to replace the present normative act on Customs and IP Enforcement, namely Regulation 1383/2003.
The highlight of everyone's expectations was related to a new Regulation that clarified the situation of the goods in transit. Unfortunately, the European Council and Parliament and the Commission have all agreed that things should remain the way they are currently approached by the Regulation in force and this came as a major disappointment for everyone.
Another aspect that came as a disappointment is related to the costs. The New Regulation continues to place the primary burden for detention costs on the right holders despite their intensive and repeated complaints in this respect.
At first glance, the provisions do not seem to have suffered significant changes. However, the new Regulation brings some important clarifications while increasing the level of responsibility of the right holders in connection to the filing of the customs application and also in connection to the handling of the obligations that come along with it.
The new Regulation will not bring, at least as far as Romania is concerned, major benefits to the right holders.
The amendment that was seen by most commentators as the major benefit brought by this new Regulation consists in a new procedure related to small consignments. According to the text published on January 10, 2013, this notion is defined as a postal or express courier consignment of three units or less, or which weights less than 2kg. A small consignment of such goods can be destroyed by Customs following notification of the detention to the importer and receipt of the importer's consent for destruction. Customs may treat a lack of response from the importer (within 10 working days) as implied consent. All this will happen without the right holder being involved at all, although the latter is required to have opted into the procedure when filing the Customs Surveillance Application in the first place. Although we do not want to downplay the importance of this new provision, we consider that it is not a major benefit for the right owners as regards Romania because, from our previous experience, these types of detentions are extremely rare in our country.
At the same time, there are quite a few changes that will actually affect the right holders despite the jurisdiction:
- a more clear organization of the provisions and a more clear definition of the used terminology;
- the extension of the customs intervention to other rights (such as trade names, topographies of semiconductor products and utility models);
- the modification of timelines for detaining goods suspected of infringing an intellectual property right and the timelines regarding the various notifications sent by the customs authorities to the persons envisaged by the Regulation,
- the modifications of the conditions in which information about detained goods is to be passed on to the right holders, users or groups of producers by the customs authorities.
As regards the right holders' liability, they are expected to be more attentive and responsible in fulfilling their obligations occurred after filing the customs application since the new Regulation provides serious penalties if they fail to comply with the obligations set out. For example, the competent customs department may decide to suspend the actions of the customs authorities until the expiry of the period during which those authorities are to take action, where the rights holder fails to fulfil its obligations.
The new Regulation is subject to a vote in the IMCO committee of the European Council and Parliament on January 24, 2013 and then to a plenary vote in April and it is scheduled to apply from January 1, 2014.
The new Romanian Trademark Law
On May 9, 2010 a new, long awaited, trademark law has entered into force in Romania. The process for the adoption of this new law started back in 2006 and it was initially intended to come into force in 2007 once Romania joined the EU. Due to some political disputes that exceeded the object of the law itself, the law was adopted by the Romanian Parliament in March 2010.
The new law brings a number of important changes in the registration procedure as well as in the enforcement area and also deals with the new status of Romania as a member of the European Union.
Exclusion of the ex-officio examination for relative grounds of refusal
Perhaps the most important change brought by the new legislation is the exclusion of the ex-officio examination for relative grounds of refusal. This, in turn, implies a lot of changes in the registration procedure.
According to the new law, the trademark application is published for oppositions within 7 days from the application date. The opposition period is of 2 months (as opposed to 3 months in the previous legislation). Within the same period of time, observations based on absolute grounds of refusal can also be submitted. The oppositions are communicated to the applicant who has a 30-day period to submit its reply.
The oppositions are examined by an Opposition Commission, which will issue a decision compulsory for the examination process.
The examination process (until a first decision is issued) must not take more then 6 months. The new law also provides for the possibility to request an expedite procedure (against the payment of a surtax) that will bring the examination procedure down to a maximum of 3 months. The procedural aspects are provided by the Implementing Regulations, which was published and entered into force more than six months after the new Trademark Law, namely on December 03, 2010.
The Implementing Regulations clarified some of the problems caused by some of the rather controversial provisions of the new Trademark Law.
The most important provisions of the Implementing Regulations are the ones regarding the opposition procedure. The new law has brought what was intended to be a very expedite registration procedure. However, it was a concern that this fast pace will be accomplished at the expense of the prior right holders, who will have a limited period of time to file oppositions. The Implementing Regulations provide for an additional two months to the two months opposition period in which the opponent can substantiate the opposition and file documents in support. This provision does not prolong the opposition deadline, which is still two months form the publication date of the application, but provided the opponent with additional time necessary in order to submit all the relevant arguments and documents in support of his opposition. The extension of time is granted only subject to the payment of an official fee.
For equity reasons, the 30 days period granted for the applicant to respond to the opposition can also be prolonged with and additional 30 days, in order to provide the applicant with sufficient time to prepare its defense in more complicated cases. The extension of time is not subject to any additional official fees.
Community exhaustion of trademark rights
The previous legislation provided for international exhaustion of trademark rights for the national and international trademarks valid in Romania. The new trademark law provided for Community exhaustion of trademark rights, in an attempt to eliminate any discrimination between the Community Trademark owners and the owners of national and international trademarks valid in Romania.
Community trademarks. Community trademark courts.
The new law dedicated an entire chapter to the Community Trademarks, the scope of their protection and the conflicts with national rights. All these provisions are taken from the CTM Regulations and their presence in the national law was not particularly necessary.
However, one provision that was absolutely necessary and was long awaited by practitioners was the appointment of a Community Trademark court. The law solved this lack in the Romanian legislation by appointing the Bucharest Municipal Court as the only Community Trademark court in Romania. This was a logical decision since this court is the most experienced court in the country in dealing with intellectual property matters and is the Romanian court that deals with all the trademark cancellation actions and all the appeals against the decisions of the Romanian PTO.
Provisional protection granted for the trademark application
According to the previous legislation a trademark enjoys provisional protection subject to registration once the trademark is published for oppositions after the examination procedure is completed.
The new law presents a different approach to this issue, and provides for a provisional protection for the trademark application from its first publication (7 days from the application date) before any examination is performed (not even the examination for absolute grounds of refusal).
Practically, the new law grants a provisional protection to the trademark application, subject to registration within a week from the application date.
Wider protection against counterfeiting and infringement
The new legislation responded to the requests of practitioners, police officers and prosecutors alike and provided for a wider incrimination of counterfeiting and infringement.
According to the previous legislation, counterfeiting was considered a crime only if it was proved that the products were placed on the market by the defended. This sometimes was an issue when the products were seized in one's house or car, or in a truck or container in customs.
This problem is eliminated by the new law, which goes so far as to incriminating the mere possession with the intent of selling of counterfeited products.
The law also provides for the possibility of a considerable criminal fine being imposed as an alternative to imprisonment (up to 40.000 EUR as opposed to a maximum of 400 EUR in the previous legislation).
These new provisions promise to make this new law a much more effective anti-counterfeiting tool at the disposal of trademark owners, police and prosecutors alike.
All the trademark applications still under examination will follow the procedure set forth by the new law. This includes all the trademark applications that have been provisionally refused (based on relative grounds of refusal) as long as the decision has not become final. In these cases the provisional refusal will be withdrawn and the trademark application will be published for oppositions.
In order to complete the new trademark system, the Government must also modify the legislation regarding the official fees, which is set by a different law, modification which was not performed at the time of this article.