The phenomenal growth of the Internet and e-commerce has been a major boost for businesses worldwide. It will not be long before the Internet becomes the primary sales platform for most businesses. However, the online world has also proven conducive to large-scale infringement, as infringers keep pace with the exponential rate of online development.
Romania has trademark, copyright and unfair competition laws to deal with trademark and copyright infringement. In addition, a substantial body of well-established case law deals with these issues and helps rights holders to tackle infringements.
The current hot topics in Romanian internet law are keyword advertising, copyright infringement and phishing, along with all other forms of online trademark infringement and counterfeiting.
Keyword advertising is based on the principle of search engine optimisation. The anchor text of a hyperlink causes search engines to associate the site with the term and improves its search engine ranking for that keyword. While search engines were originally merely a helpful tool for locating online content, the home pages of well-known search engines are often now the default page in a browser or the first page opened by an internet user.
Keyword and contextual advertising has become the most popular form of online advertising and is a major source of income for search engines. As a result, search engines have come under fire from trademark and trade name owners, which claim that advertisers should not be permitted to use competing trademarks or company names in paid-for keyword advertising campaigns or metatags.
Trademark owners can take interim measures against allegedly infringing keyword advertising, such as preserving evidence by way of interim orders or obtaining injunctive relief against infringers or intermediaries (ie, web hosting companies). Romanian courts – especially the Bucharest courts, which have specialised IP panels – have proved open to penalising intermediaries in order to prevent rights holders from suffering extended damages due to ongoing infringements.
In addition, rights holders can make use of the relevant IP-related or e-commerce laws. The Bucharest Tribunal has heard several cases (including Heborom International v Group M Marketing, 13816/3/2007) in which trademark owners have successfully protected their rights. Romanian courts often seek the opinion of an IT expert to assist in evaluating whether a specific example of keyword advertising qualifies as trademark infringement – which can lead to a considerable delay in decisions being issued. It is therefore recommended that rights holders provide the court with an independent expert report.
In addition to court proceedings, rights holders should monitor keyword advertising carefully and regularly in order to spot any unfair use of their brands. While the battle between search engines and brand owners will most likely continue, a sustained enforcement campaign has prompted search engines to adapt their policies in order to protect and serve brand owners’ interests as well as their own. For example, Google conducts investigations following brand owners’ complaints and will disable keywords where the advertising is misleading or confusion could be created in respect of the origin of advertised goods or services.
When web hosting companies have been reluctant to act (although this is rare), formal complaints have been addressed to the police and the Ministry of Telecommunications
Online copyright infringement is still quite common in the Romanian market – for example, peer-to-peer downloads of music, software and films, the illegal online broadcast of television shows and films and the illegal use of images without authorisation.
Although the Copyright Law is up to date with EU law and has been in place since 1996, and although several television campaigns have sought to inform the public of the risks involved in downloading and making available illegal content on the Internet, there is still a high level of copyright infringement in Romania. While this may be partly down to ignorance, the most common explanation appears to be: “Everyone is doing it, so why shouldn’t I?”
In October 2012, in an unprecedented action, the National Audiovisual Council (CNA) requested police support in order to shut down 42 Romanian websites which were broadcasting television shows, films and video content without observing the audiovisual laws and without authorisation from the copyright owners. The CNA’s action was the result of a complaint received from the only website that broadcast video content legally.
The CNA action was widely reported in the media and in specialist journals – with some pointing out that the CNA could not act directly against websites and was not authorised to judge whether a certain website had obtained the copyright owners’ consent. Two questions remain unanswered: were the 42 websites illegally broadcasting video content and was the CNA entitled to ask the police to investigate?
Under the Copyright Law, any party can ask the police to investigate copyright infringement. The police may then launch an ex officio investigation if they have information about a copyright crime – under the law, using a copyrighted work without authorisation is a criminal offence. Therefore, it appears that the CNA was entitled to take this action and to have the matter investigated by the police.
The police have the necessary skills, techniques and support from other entities (eg, the US Federal Bureau of Investigation) to investigate internet-related fraud cases. However, this particular investigation could well exceed their resources – while the CNA list named only 42 websites, a Google search revealed more than 100,000 Romanian language websites advertising ‘free films online’.
One possible solution to this problem is to inform and educate the public on an ongoing basis about copyright infringement and how it is punishable under Romanian law.
‘Phishing’ refers to the fraudulent attempt to acquire private sensitive information by masquerading as a trustworthy entity in an electronic communication. Such communications (typically sent through email or instant messaging) are designed to look as though they have been sent from popular websites, auction sites, banks, shipping companies, mobile phone carriers, online payment processors, public authorities or national lottery companies. Using social engineering techniques such as website forgery, link manipulation and recently ‘vishing’ (voice phishing), phishing has become all too common in Romania.
In recent years, Romanian banks have been the target of repeated attacks, some of which have been extremely sophisticated. According to a police representative, the investigations in these cases did not generally lead to criminal charges.
However, some phishers at the lower end of the scale (ie, involving sums under $25,000) were imprisoned after being found guilty of organising phishing schemes in connection with internet auctions from 2002 to 2006 (Decisions 870/2005, 4399/2006 and 1201/2007 of the High Court of Cassation and Justice).
Legal remedies against phishing
The fight against phishing is by far the most complex of all internet IP issues, requiring significant skills and resources. In some cases, collaboration with the police has produced results. Brand owners are succeeding in their efforts to guard against phishing by constantly monitoring online auction websites and targeting website forgeries based on similar domain name registrations. Some phishing scams have been dealt with simply by writing to and negotiating with web hosting providers and asking them to deactivate similar or identical domain name registrations or to delete websites with infringing content. When web hosting companies have been reluctant to act (although this is rare), formal complaints have been addressed to the police and the Ministry of Telecommunications, eventually leading to the closure of some websites.
Online trademark infringement and counterfeiting
Brand owners should establish procedures and policies to deal with online trademark infringement and counterfeiting. A first step is to monitor closely popular websites and social media in order to establish, on a case-by-case basis, whether certain uses constitute infringement.
If a brand owner decides that action must be taken, the next step is to use the complaint policies and procedures of the websites involved. The International Trademark Association has issued a guide – Best Practices for Voluntary Measures in Addressing the Sale of Counterfeits on the Internet – which contains valuable information on how to tackle counterfeit goods.
The sale of counterfeit goods is an important issue for brand owners and also poses a serious risk to consumer health and safety. In recent years, the sale of replica mobile phones (usually iPhones, BlackBerrys and Samsung phones) has become the most widespread form of online counterfeiting.
Most of these replicas originate from China and appear to offer functions that are not found in the original devices (ie, dual SIMs). Brand owners should gather and preserve evidence about websites offering such replicas and constantly monitor search engines for expressions such as ‘brand name replicas online’.
Dragos M Vilau
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.