Jan 12, 2023 (Newsletter Issue 1/23)New Administrative Procedure for TM Revocation and InvalidationOn 13 December 2022, Romania amended Law No. 84/1998 on Trademarks and Geographical Indications (GEO 169/2022) by Government Emergency Ordinance No. 169/2022, adopting significant amendments regarding the revocation and invalidation of trademarks.
Interested parties may now file an application for revocation or invalidity before the Romanian State Office for Inventions and Trademarks (OSIM) through an administrative procedure. Previously, the only possible route was through the Bucharest Court, which remains available as an alternative route.
A separate service of OSIM consisting of a three-member committee will handle the revocation and invalidation applications. These applications need to meet formal requirements before they will be transmitted to the defendant, who will be granted 30 days to file a statement of defense. The defendant’s response, if filed, will be transmitted to the plaintiff, who may file a counter-response within 10 days.
The IP Office’s revocation and invalidation decisions may be contested before the Bucharest Court within 30 days of receipt. The decisions of the Bucharest Court can be further appealed before the Bucharest Court of Appeal.
For more information, please check here and hereSource: www.petosevic.com; www.bpv-grigorescu.com Nov 17, 2022 (Newsletter Issue 16/22)New Implementing Regulations of Law on Trademarks and Geographical IndicationsOn 7 October 2022, the amendments to the Government Decision No. 1134/2010 on the approval of the Implementing Regulations of the Law on Trademarks and Geographical Indications entered into force. The main amendments are explained below.
Representation Before the Romanian IPO
The Power of Attorney (PoA) should now indicate the scope of the mandate, the date on which the power was granted, and its duration. For trademark applications or procedures that involve registered trademarks, the deadline for the subsequent filing of the PoA is extended to two months from the filing date; previously it was 30 days. In these cases, the new regulations clarify that in the absence of a PoA, the procedures, the proceeding will continue with the applicant or trademark owner.
Representation of Trademarks
Owners now have the possibility to upload audio or video files when filing an application for a sound, motion, hologram, or multimedia trademark.
Distinctiveness Acquired Through Use
Along with the trademark application, the applicant can now file a declaration stating that the trademark acquired distinctiveness through use and support the declaration with evidence.
Requirements for Filing Oppositions
The minimum requirement for filing a formal opposition is that the notice of opposition must include the following details on the prior right relied on: trademark registration number, filing date and, if applicable, registration date and priority date. The PoA can be filed within two months from filing the opposition.
Observation Procedure
The new regulations explicitly state that observations filed by third parties are communicated to the applicant, who is then granted 30 days to file a response during the examination proceedings.
Renewal Procedure
If a renewal request has deficiencies, the trademark owner is granted 30 days to remedy them; previously it was 3 months.
Recording of Assignments, Transfers, Licenses and Other Rights
Certified true copies of supporting documents are now sufficient to prove these changes. Previously, it was necessary to submit original documents or legalized copies.
Changes Concerning the Name/Address of Trademark Owner/Representative
Certified true copies of supporting documents are sufficient to prove these changes. The previous regulations did not contain any provisions concerning such formalities.
For more information, please click here Source: www.petosevic.com Jan 28, 2021 (Newsletter Issue 2/21)
Front and Back-Office Systems Enhanced
The Romanian State Office for Inventions and Trademarks (OSIM) has enhanced its front-office and back-office applications with added capabilities. The front-office has been expanded with five new online services for trademarks: limitation, withdrawal, licensing rights, oppositions and observations. From now on, users will be able to file trademark applications using these services.
User interface enhancements and new back-office software features enable users to make more efficient use of the tool while simultaneously benefiting from performance improvements during their day-to-day activities.
Source: www.euipo.europa.eu
Oct 08, 2020 (Newsletter Issue 16/20)
IP Office System Improved
On September 21, 2020, the Romanian State Office for Inventions and Trademarks (OSIM) successfully integrated its front office and back office systems. As a result, trademarks and designs filed in the front office are automatically available in the back office application without the need for manual intervention.
This has been achieved through the collaboration of the EUIPO and OSIM under the joint cooperation framework.
Source: www.euipo.europa.eu
Aug 06, 2020 (Newsletter Issue 13/20)
E-Filling at OSIM Updated
The State Office for Inventions and Trademarks of Romania (OSIM) has successfully updated its trademark e-filing with the support of European Cooperation at the EUIPO.
The system is now fully compliant with the new Romanian law on trademarks and includes a new e-signature capability. Trademark e-filing, design e-filing and e-services at OSIM have also been aligned with the provisions of the General Data Protection Regulation.
Source: euipo.europa.eu
Jul 23, 2020 (Newsletter Issue 12/20)New Trademark Law in ForceAs of July 13, 2020, a new Trademark Law entered into force, implementing the EU Directive 2015/2436 of the European Parliament and of the Council of December 16, 2015. For the time being, the implementing regulations of the Trademark Law are still pending. They are expected to be published by mid-September 2020.
The main changes concern the registration proceedings, allowing for a clearer extent of protection in respect of the goods and services as well as changes in the registration and opposition proceedings, streamlining the procedure and granting a precise registration date for the trademark.
Some of the most important changes include:
- Elimination of graphical representation requirement
- Possibility to register non-traditional signs such as sounds, holograms, multimedia marks
- Adoption of the literal interpretation of class headings when interpreting the scope of protection
- Option to clarify the scope of protection for existing trademark registrations covering class headings until September 30, 2020.
- Changes to opposition proceedings by introducing a number of new procedural steps, amending the date from which the opposition term is calculated and implementing a cooling-off period
- Elimination of possibility to contest a trademark application directly before the Appeals Committee
- Extending and clarifying absolute grounds for refusal and introducing additional absolute grounds for refusal.
- Introduction of administrative invalidity and revocation proceedings at the Romanian PTO starting from January 14, 2023
For further information, please see the article of our Country Index Partner Ratza & Ratza here
Source: Ratza & Ratza, Romania Feb 06, 2020 (Newsletter Issue 1/20)
E-Filing for Designs Improved
The State Office for Inventions and Trademarks (OSIM) has fully implemented the upgrade of its front office IT system, improving the e-filing for designs.
The new e-filing service allows users to submit design views in a digital format rather than on paper, which significantly simplifies the administrative processes and increases efficiency within OSIM.
The new service is able to process standardised, multiple and divisional design applications. It also provides user guidance through the sections, previous design applications as a template to import data, and improved fees details.
Source: www.euipo.europa.eu
Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationRomania has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Apr 11, 2018 (Newsletter Issue 7/18)New Trademark Law DraftedOn January 12, 2018, the Romanian PTO published the first draft of the new trademark law, aimed at transposing the Directive (EU) 2015/2436 into national legislation. The most important changes are listed below.
Absolute Grounds for Refusal or Invalidity
The draft law extends the absolute grounds for trademark refusal or invalidity by adding the words “or another characteristic” to the relevant article in the law, meaning that now the restrictions apply not only to shape signs but to other types of signs as well. Namely, according to the draft law, signs can be refused if they consist exclusively of the shape, or another characteristic, which (i) results from the nature of the goods themselves, (ii) is necessary to obtain a technical result, or (iii) gives substantial value to the goods.
Earlier Rights
The draft law widens the scope of earlier rights to include traditional terms, guaranteed traditional specialties and plant variety rights, along with the already covered designations of origin and geographical indications.
Trademark Infringement
The draft law broadens the concept of trademark infringement by establishing additional uses of a similar or identical sign that may be prohibited by the trademark owner and are not specified in the current trademark law, namely:
- Use of a sign as a company name or as part of a company name (however, the draft law does not clarify, like Directive (EU) 2015/2436 does, that in order to be prohibited, such use has to be made for the purposes of distinguishing goods or services);
- Use of a sign in comparative advertising in a way contrary to the provisions of the Misleading and Comparative Advertising Act No. 158/2008; and
- Use of a sign on packaging, labels, tags, security or authenticity features or devices, and placing these on the market.
Further changes concern the goods in transit and the revocation and declaration of invalidity.
For more information, please see here Mar 31, 2015 (Newsletter Issue 5/15)
Increase of Fees Suspended
Law no. 31/2015 for suspension of the provisions of art. 4 of Government Ordinance no. 41/1998 on the protection of industrial property fees and the use thereof was published in Official Gazette of Romania, Part 1, no. 169 dated March 11, 2015.
The normative act suspends, until the 31th of December 2016, the appliance of the provisions of the Government Ordinance no 41/1998 on upgrading the official fees in lei owed by natural and legal persons in the field of industrial property protection.
Nicolae Muresan, Andra Musatescu Law & Industrial Property Offices, Bucharest
Sep 02, 2014 (Newsletter Issue 13/14)
Expedited Examination of Trademark Applications Cancelled
The expedited examination of national trademark applications and the corresponding official fee were abrogated on 26 May 2014.
The standard examination timeframe is six months from the date the application is published for opposition and observation purposes. The timeframe for expedited examination was three months from the mentioned publication date.
Source: www.petosevic.com
Dec 03, 2013 (Newsletter Issue 17/13)
E-Filing Soon
The Romanian PTO is planning to introduce electronic filing of trademark applications via its website by the end of 2013 or in early 2014. The electronic filing system for designs is expected to follow in 2014.
The PTO also improves its online databases and search tools in order to enable better, easier access to trademark and design registrations databases.
Source: www.petosevic.com
Sep 02, 2012 (Newsletter Issue 13/12)New Instructions for ExaminationsRomania’s PTO has issued new instructions for the examination of trademarks and geographical indications, in effect as of August 1, 2012.
The new instructions aim to optimize the workflow within the PTO and ensure a fast and efficient examination procedure.
Some of the changes are:
- All requests concerning new trademark and GI applications or existing registrations are to be processed immediately upon receipt.
- With regard to trademarks, the PTO will conduct an examination as to relative grounds for refusal (search for prior identical or confusingly similar trademarks). However, it is still unclear, whether earlier rights could be cited to refuse a trademark on the basis that it does not meet the general conditions for registration set forth in the law. Clarifications from the PTO regarding this are expected shortly.
- PTO provisions on the examination of trademarks will closely follow OHIM’s examination manual.
- PTO will analyze oppositions and/or observations requests without taking into consideration whether the examination fees for the application against which the opposition is filed, are paid.
- Expedite examination of trademarks must be requested when filing the application form. The fee for expedite examintation must be paid when filing the trademark application.
- In case of multiple oppositions they are analyzed and decided upon in chronological order.
- Minor changes will be made to the trademark application form.
For further information please also check the article of Ms Aura Campeanu here
Source: www.petosevic.com May 03, 2010 (Newsletter Issue 10/10)New IP Laws EffectiveThe Law 66/2010 amended the current Romanian Law on Trademarks and Geographical Indications and entered into force in Romania on May 09, 2010. The new law introduces important changes in terminology, improved registration procedure for national applications, and it ensures the existence of a legal framework for the prosecution of European Union community trademarks.
For more information please click hereSource: www.petosevic.com Legal basis is the Law 84/1998 on Trademarks and Geographical Indications, modified and completed by the Law no. 112/2020 published in the Official Gazette of Romania, part I, no. 603 of July 09, 2020.
Romania is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. It can also be acquired by wide public recognition (well-known trademarks).
Nice classification, 12th edition
Trademarks may consist of any signs such as words including names, or drawings, letters, numerals, devices, the shape of a product or its packaging or sounds, provided that these signs are capable to:
a) to distinguish the goods or services of one enterprise from those of other enterprises
b) to be represented in the Trademark Register in a manner allowing the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor.
The following trademark types are registrable: trademarks, service marks, collective marks, certification marks.
The application is filed with the State Office for Inventions and Trademarks.
Multiple-class applications are possible. Using general terms or general indications included in the class headings of Nice Classification shall be interpreted as including all goods or services covered by the literal meaning of the indication or term.
Audio or video files can be uploaded when filing an application for a sound, motion, hologram, or multimedia trademark.
Foreign applicants only need a local agent if the foreign person is not from the EU or the European Economic Area, except for the trademark application filing. Foreigners from the EU or EEA can act before the State Office of Invention and Trademarks directly only for filing of a trademark application which must be in Romanian language.
A non-legalized Power of Attorney (PoA) is sufficient. The PoA must indicate the scope of the mandate, the date on which the power was granted, and its duration.
Where communication by electronic means is used, the technical conditions for the transmission of documents by electronic means shall be established in accordance with instructions approved by the Director General of the State Office of Invention and Trademarks.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination on absolute grounds of refusal. There is no examination on relative grounds according to the trademark law.
The processing time from first filing to registration or first office action is of approx. 10 to 15 months, if no office actions are issued and/or oppositions are filed.
An application admitted to registration for which the registration procedure was concluded is recorded in the Trade Mark Registry and the registration certificate is issued, subject to payment of the official fees.
The registration procedure shall be deemed completed on the date when the trademark application admitted to registration may no longer be the subject of an opposition or, if an opposition has been filed, on the date on which the opposition decision became final or the opposition has been withdrawn.
Registered trademarks are published in the Official Bulletin for Industrial Property.
Failing the payment, it will be considered that the applicant has renounced the registration of the trademark. The renouncement is recorded in the Trade Mark Register and published in the Official Bulletin for Industrial Property.
National:The opposition period is 2 months as of the date of publication of the trademark application admittance. The minimum requirement for filing a formal opposition is that the opposition notice should include the following details of the prior right being invoked: trademark registration number, filing date and, if applicable, registration date and priority date. The State of Invention and Trademarks will grant a 2-month period of cooling-off for trying to reach an amicable settlement. On joint request of the opposing parties, this period can be extended for a new period which cannot exceed three months.
At the request of the applicant, the proprietor of the earlier trademark will file evidence attesting the use of the earlier trademark during a period of 5 years preceding the application date or the priority application date or proper reasons for non-use. If the earlier trademark is a European Union trademark, the effective use of it will be established according to art. 18 of European Union Trademark Regulation.
The opposition will be rejected if no evidence of use is filed.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe Romanian natural persons or legal entities shall pay the fees in RON, the Romanian currency. The fees in RON are updated yearly by Government Decision and depend on the currency exchange rate and the inflation index, respectively, valid on the date of November 1 of each year. The Government Decision comes into force on the first day of the following year.
The official fee (including the official fees for publication of the new trademark application for opposition purposes) for the first class is EUR 150 / RON 741 for word marks, EUR 180 / RON 889 for black and white device marks and EUR 330 / RON 1,632 for colored marks. For each additional class, the fee is EUR 50 / RON 247. The fee for publication of the registration and for certificate issue is EUR 50 / RON 247.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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Jan 12, 2023
Ratza & Ratza, Bucharest, Romania
