09-02-2012 (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
05-03-2010 (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, as republished in the Official Gazette of Romania, part I, no. 350 of May 27, 2010, in virtue of Art. V of the Law 66/2010 for amending and completing the Trade Mark Law in 2010.
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 trade marks).
Nice classification, 10th edition
Trademarks may consist of any distinctive signs capable of graphic representation such as words including names, drawings, letters, numerals, devices, holograms, colors per se or combination thereof, three-dimensional shapes, and in particular the shape of aproduct or its packaging, acoustical sounds or any combination of the listed above.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks.
The application is filed with the State Office for Inventions and Trademarks.
Multiple-class applications are possible.
Foreign applicants only need a local agent if the foreign person is not from the EU or the European Economic Area. Foreigners from the EU or EEA can act before the Romanian Patent Office directly.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination.
As of August 01, 2012, the application also includes a preliminary examination in which the PTO will conduct a search among national registrations, international registrations designating Romania and Community registrations to identify earlier identical trademarks registered for identical goods in the same class or for similar goods in different classes. The search report will be issued and sent to the applicant. At the same time, the PTO will send a notice to the holder of earlier trademark(s) cited in the search report.
The application process further includes a substantive examination on absolute grounds for refusal subject to payment of the examination fees. As of August 01, 2012, during this stage, there will also be examined if a trademark is capable of distinguishing the goods/services of one undertaking from the goods/services of another undertaking.
The processing time from first filing to registration or first office action is of approx. 8 to 12 6 months, if no office actions are issued and / or oppositions are filed.
It is possible to expedite the examination procedure provided that an additional fee is paid. Expedite examination must be requested and the related fee must be paid when filing the application form. Subsequent requests for expedite examination and / or subsequent payment of the related fees is not accepted.
Applications for which a decision of grant is made are recorded in the Registered Trade Mark Registry, subject to payment of the official fees for publication and certificate issue. Registered trademarks are published in the Official Bulletin for Industrial Property - Trade Mark section for appeal purposes.
The opposition period is 2 months as of the date of publication of the application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
2 months as of the date of publication of the application in the WIPO Gazette.
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
If the trademark has not been used within a continuous period of 5 years from registration or during a continuous period of 5 years any time during the life of the registration, it may become subject to cancellation.
The official fee (including the official fees for publication of the new tm application for opposition purposes) for the first class is EUR 150.00 for word marks, EUR 180.00 for black and white device marks and EUR 330.00 for colored marks. For each additional class, the fee is EUR 50.00. The fee for publication of the registration and for certificate issue is EUR 50.00.
Trademark Licence Agreement
In Romanian law a licence agreement can be concluded orally, but an agreement in writing is advisable. Licensing of unregistered marks is permitted. A trademark can be licensed for some or all of the goods or services covered by the mark. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of a licence agreement.
There are provisions in law for the recordal of a licence. The recordal is voluntary, but the licence becomes effective and enforceable against third parties only after its recordal with the Romanian State Office for Inventions and Trademarks (SOIT). There is no time frame for a recordal.
There is no standard content for a licence agreement but according to the provisions of the Romanian Law on Trademarks a licence agreement must contain:
1. The names and addresses of the licensor and the licensee (and of their empowered attorneys) and, if the licensee is a legal person, its form of organisation
2. The trademark registration number
3. A list of the licensed goods and services
4. The territory in respect of which the licence is granted
5. The duration of the licence agreement
6. The signature of the licensor or its empowered attorney
The request for recordal of the licence agreement with the Romanian SOIT must be accompanied by a notarised excerpt of the licence agreement along with the original power of attorney issued by the trademark owner and/or the licensee to their respective empowered attorneys, if represented before the Romanian SOIT.
The licence agreement becomes enforceable against third parties from the date of publication in the Official Bulletin for Industrial Property.
The licensee may join the trademark owner in infringement proceedings and can call upon the owner to institute infringement proceedings. When a trademark infringement action was initiated by the trademark owner, any of its licensees may intervene in the proceedings, requesting compensation for damages caused by the trademark infringement. An exclusive licensee may institute infringement proceedings in his own name if the trademark owner does not institute infringement proceedings within a term requested by the licensee. The law does not provide a time limit for the term that may be requested by the licensee. The licensee is not required to cite the trademark owner as co-defendant in any such proceedings.
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We would like to thank the following law firms for their assistance in updating the information provided:
PETOŠEVIĆ, Bucharest , Romania
, Bucharest, Romania
, Bucharest, Romania Licensing
Andra Musatescu Law & Industrial Property Offices, Bucharest, Romania
Nestor Nestor Diculescu Kingston Petersen, Bucharest, Romania