National Trademarks

ROMANIAN TRADEMARKS REGISTRATION

A trademark is a sign susceptible of graphical representation serving to differentiate the products or the services of a natural person or legal entity from those of other persons; distinctive signs, as: words, including names of persons, drawings, letters, ciphers, figurative elements, tri-dimensional signs, and, in particular, the shape of the manufacturer or its package, color combinations, as well as any other combination of these signs, may be considered trademark.

LEGAL REQUIREMENTS
The legal requirements stated in Romanian Law no.84/1998 republished regarding Trademarks and Geographical Indications are:
• full details of the applicant(s), including full name, address and nationality;
• The name of the trademark; the design when the trademark is a word with figurative elements;
• a description of the goods and services to be covered by the applicant, if possible with indication of international classes;
• the date, country of filing, and application or registration number of any basic overseas application from which priority is claimed.
When the applicant is a foreign person, there shall be indicated the state of which he is a National, the state where he has residence or the state wherein he has an establishment within meaning of art.3 from Paris Convention; when the applicant is a legal entity, form of constituting the same, as well as the denomination of the state whose legislation governs statute thereof.
If the priority of an earlier application is claimed, a declaration of claiming the priority shall be included in the request, together with the indication of the state and the date of earlier filing.
LEGAL PROCEDURE
PUBLICATION
The trademark applications will be published at once after the filing application date within seven days.
The published trademark application confers to the applicant exclusive provisional rights on the trademark and the interdict rights to use the trademark by the other parties under final trademark registration condition.

OPPOSITION
Within two months from the date of trademark application’s publication, the owner of an earlier trademark (national, community ,international trademark having Romania as designated state) or of a well-known mark, the holder of an earlier right in a likeness or surname, a protected geographical indication or a protected industrial design, of any other protected industrial property right or copyright, or any other concerned person, may file opposition to the published trademark application to the Romanian State Office for Inventions and Trademarks - RO PTO.
In the same term of two months the interested person could file in writing observations to the published trademark application for absolute reasons.
Oppositions shall be filed in writing, reasoned, and accompanied by payment of the prescribed fee.
If the fee is not paid, opposition shall be deemed not to have been filed
RO PTO makes the substance examination of the trademark in six months from the publication date of the trademark application.

APPEAL
The RO PTO’s decision may be appealed within 30 days from the decision communication date or from the second publication date of the trademark.

LOYAL PARTNERS can represent you either for preparing, elaborating, drafting, and filing an opposition, preparing, elaborating, drafting, and filing a reply to a possible opposition or preparing and filing an appeal against RO PTO decision.

REGISTRATION
Law no. 84/1998 states that when the decisions of the trademark registration have become final, the trademark is registered in the National Register of Trademarks and the State Office for Inventions and Trademarks issues to the owner the certificate of registration of the trademark, once the applicant has paid the legal fee.

LIMIT OF TRADEMARK
The owner of the trademark can not ask a third party not to use in his commercial activity:
a). the name/designation and the address/premises of the owner;
b). indications referring to the species, quality, destination, value, geographical origin, the period of manufacturing of the product or the period of performing the service under the trademark, as well as to any other characteristics;
c). the trademark, if this is necessary in order to indicate the destination of the product or of the service, namely for spare parts or accessories;

DILUTION OF TRADEMARK
Law 84/1998 republished, article 48, stipulates that the holder of a previous trademark, who deliberately tolerated for an uninterrupted period of 5 years the use of a trademark subsequently recorded, cannot request the annulment nor withstand to the use of the subsequent trademark. This is the case only if such a subsequent trademark was requested mala fide.

CANCELLATION
A registered trademark can be canceled if, within a continuous period of five years, the mark has not been put to genuine use on the territory of Romania in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. A registered trademark can be canceled as well whether the trademark was registered with infringement of the earlier intellectual property rights.

TRADEMARKS RENEWAL
The trademark registration shall be in force a ten years period from the date of the regular national filing.
The trademark registration can be renewed to the end of each ten-year period protection under the payment of the prescribed fee condition.

TRADEMARKS RIGHTS TRANSFER
ASSIGNATION
The trademark rights may be assigned independently of the business transfer whom the trademark is incorporated. Assignment shall be performed in writing and signed by the contract parties under the nullity penalty.

The trademark rights assignment may be performed for all or part of the goods or services for which the trademark is registered;

The owner’s estate transfer shall include transfer of the trademark rights. The transfer of certain elements of the owner's estate shall not affect his capacity as owner of the trademark rights

Identical or similar marks belonging to the same owner that are used for identical or similar goods or services may be assigned only as a whole and only to one person, under the nullity penalty of the assignment instrument .
The request for assignment filling shall be accompanied by the document attesting the change of the trademark’s owner.
At the request of the concerned person and the payment fee prescribed, the State Office for Inventions and Trademarks shall enter the assignment in the National Trademark Register and publish it in the Industrial Property Official Bulletin. Assignment may be invoked against third parties from the date of its entry in the National Trademark Register.

LICENSE
The trademarks owner may, under a licensing contract, authorize other persons to use the trademark on the whole or a part of the territory of Romania for all or a part of the goods or services for which the trademark was registered. So a license may be exclusive or non-exclusive.
During the term of the licensing contract, the licensee shall be required:
(a) To use the trademark only for associated goods.
(b) To add the indication "under license …" to the trademark associated with the products that are the subject matter of the license, in accordance with the contract.
The license contract shall be registered in the National Trademark Register after the prescribed fee payment and shall be published in the Industrial Property Official Bulletin. The license may be invoked against others as from the date of this registration.

TRADEMARKS LITIGATION
RO PTO DECISION APPEAL
The decision of the Appeal Board from RO PTO may be appealed to the Bucharest City Court within 15 days of its notification.
Decisions of the Bucharest City Court may be appealed to the Bucharest Appeals Court within 15 days as from their notification.

COUNTERFEIT
The trademarks owner is entitled to request to the competent court to prohibit any person to use the trademark in force without the owner consent the following:
(a) any sign which is identical with the trademark, in respect of goods or services which are identical with those for which the trademark is registered;

(b) any sign where, because of its identity with or similarity to the trademark and because of the identity or similarity of the goods or services on which the sign is affixed, there exists a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trademark;

(c) any sign which is identical with or similar to the trademark, in respect of goods or services which are not similar to those for which the trademark is registered, where the latter has a reputation in Romania and where use of that sign without due cause could take unfair advantage of the distinctive character or the reputation of the trademark.

(3) In application of paragraph (2), the owner of the trademark may request that third parties should be prohibited from performing, in particular, the following acts:

(a) affixing the sign to the goods or to the packaging thereof;

(b) offering the goods, putting them on the market or stocking them for such purposes under that sign, or offering or supplying services there under;

(c) putting the goods under that sign into free circulation, exporting, importing or placing them under suspensive or economic customs procedure or under another customs procedure, as defined in customs regulations;

(d) using the sign on business papers and in advertising.

The applicant for trademark registration may only request the prohibition referred above after publication of the trademark.
The applicant may claim damages for the acts referred above subsequently to trademark publication, under the civil law.
A decision ordering payment of damages shall be enforceable only as from the date of trademark registration.
If the application for registration is refused, the applicant shall not be entitled to damages.
The performance of any above act by a person not having the consent of the owner of the registered mark shall constitute an infringement.
None of the acts referred to shall constitute an infringement if carried out prior to the date of publication of the mark.
The owner of a mark may institute infringement proceedings only after the date on which the mark was entered in the National Trademark Register.
Proceedings shall be instituted on a prior complaint by the injured party.

UNFAIR COMPETITION
Any use of marks or geographical indications contrary to honest practice in industrial or commercial activities, with an attempt to mislead consumers, shall constitute an act of unfair competition .Criminal proceedings shall be instituted on a prior complaint by the injured party.