Trademark availability search
Filing trademark applications
Fees for trademark registration
Examination of trademark applications
Oppositions to trademark applications
Final steps to registration
The effective protection and enforcement of IP rights is paramount to any business's success. Thus, business owners should put effort into the proper selection and protection of the brand under which their business will operate, at the very early stages of the business's existence. It is advisable to initiate use of the selected brand only after securing its trademark protection, in order to avoid costs and damages generated by potential conflicts with owners of prior rights.
Once the brand idea is born, a trademark availability search should be carried out in the territories in which the business offers or intends to offer its products and services presently or in the future. This ensures that the selected brand is available for use and registration as a trademark in such territories in connection with the relevant goods and services.
If the business owner wishes to seek trademark protection in Romania, the trademark availability search should be carried out in the relevant online databases among identical or similar earlier trademarks seeking or enjoying protection for identical or similar goods and/or services in Romania, namely:
- national registered trademarks and trademark applications;
- EU-registered trademarks and trademark applications; and
- internationally registered trademarks that have Romania or the European Union designated for protection.
Despite Romania being a first-to-file jurisdiction, an Internet search for the candidate mark in relation to identical or similar goods and/or services is also recommended in order to identify any potentially conflicting prior use of the searched mark on the Romanian market.
An overview of the relevant results of a trademark clearance search performed in this manner facilitates an assessment of the potential risks associated with the use of the envisaged mark and the chances of successfully registering it in Romania. It also enables the brand owner to establish a strategy for mitigating such risks and increasing the chances of success.
The trademark registration procedure in Romania is governed by Law No. 84/1998 on trademarks and geographic indications, as republished (the Romanian Trademarks Law). The new law entered into force in July 2020, transposing the provisions of EU Trademarks Directive.(1) The new provisions of the Romanian Trademarks Law introduce important changes, among others, to the procedural steps of trademark registration in Romania.
Once the brand is selected, brand owners can apply for its registration as a trademark before the Romanian State Office for Inventions and Trademarks (the Office). Applications may be filed in paper format or electronically through the Office's e-filing platform and must include:
- details of the applicant and the appointed representative (if applicable);
- a representation of the mark;
- a list of the goods and/or services for which protection is sought (in compliance with the Nice Classification in force);
- proof of payment of the official fees for filing and publishing the application; and
- a signed power of attorney if the application is filed through a representative.
Fees for trademark registration
The official fees associated with the registration of a national trademark in Romania depend on the trademark type (ie, whether it is a word or figurative mark and whether it is in colour or black and white) and the number of classes of goods/services designated in the application.
In 2022, the legal fees for the registration of a national trademark in one class amount to the following from filing to registration:
- €200 for a word mark;
- €230 for a black-and-white figurative mark; and
- €380 for a colour figurative mark.
These fees include the official fee applied for the issuance of the registration certificate (which is paid at the end of the registration procedure) but exclude the official fees that would be applied for invoking a priority right. Furthermore, if the trademark application designates goods or services in more than one class, an official fee of €50 will be applied for each additional class.
The fees due by foreign applicants are applied in euros, while Romanian applicants should pay the official fees in the national currency (Romanian leu).
Examination of trademark applications
After being filed before the Office, the trademark application is examined within seven days from its filing date. If no aspects need to be remedied, it will be published in the first part of the Official Bulletin, provided that it fulfils the legal requirements. The first publication in the Official Bulletin marks the beginning of the two-month-period in which any interested party may submit written observations on absolute grounds. Third parties who file written observations shall not become parties to the proceedings before the Office, but their observations are communicated to the applicant, which has the right to comment on the objections raised.
The Office will issue its decision further to performing the substantive examination of the trademark application, based on the absolute grounds of refusal provided by law, in a term of six months calculated from its publication in the Official Bulletin.
If a non-essential element of the trademark application is devoid of any distinctive character and such element is likely to give rise to doubts as to the extent of protection sought, the Office shall request that the applicant submits a declaration, within 30 days as of the date of notification, stating that no exclusive rights are invoked in connection to such element of the trademark. The disclaimer will be published upon the grant of the trademark application. In practice, if the applicant disagrees with the examiner's notice, it may file arguments in response in the same term provided for filing the disclaimer. However, if the examiner maintains its request, in the absence of the requested disclaimer, the trademark application shall either be partially granted or refused. Disclaimers may not be requested or filed for all of the verbal elements comprising the mark.
Further, during the substantive examination, the Office may issue provisional refusals, if the trademark application fails to meet the legal requirements for registration provided under the absolute grounds for refusal. Provisional refusals are notified to the applicant, which has 30 days to file its point of view or withdraw the application. This term may be extended by an additional 30-day period, upon the payment of the corresponding official fees.
If the refusal is maintained and a final refusal decision is issued by the examiner on absolute grounds, the applicant can contest this decision before the Office's Appeals Committee within 30 days from its date of communication.
Oppositions to trademark applications
Granted trademark applications are further published for third-party opposition in the second part of the Official Bulletin. Interested parties may oppose the registration on the basis of the relative grounds for refusal provided by law within two months of the second publication in the Official Bulletin of the filed application. The Office does not conduct an ex officio examination of relative grounds for refusal during the examination process.
Opposition notices that comply with the legal requirements (ie, that contain the articles in law relied upon, the earlier rights invoked and a brief reasoning) are communicated to the applicant and a similar notice is also sent to the opponents. Both parties are informed that there is a two-month-period (unofficially named in practice the "cooling-off" period) for negotiating a potential amicable settlement of the opposition. This period may be extended further to the parties' joint request for a maximum period of three months.
If the parties do not reach an agreement in the cooling-off period, the opponent will be granted 30 days to substantiate the opposition with arguments and evidence, which will be further communicated to the applicant. The applicant can reply to the opponent's arguments within 30 days of an official communication received from the Office in respect of the opponent's substantiated arguments and evidence.
If the earlier rights invoked in the opposition are vulnerable for non-use (ie, if they were registered more than five years prior to the filing date of the subsequent trademark application or the priority date invoked by the subsequent trademark application), the applicant may request proof of genuine use of the earlier rights in the relevant territory (ie, Romania or the European Union). The opponent must file such proof before the Office within two months from the Office's request to this effect and this will also be communicated to the applicant, which can comment on the material within 30 days of the Office's communication. Failure to provide proof of genuine use will lead to the refusal of the opposition without its examination on the merits.
According to law, the Office should render its decision in respect of the opposition procedure within two months of the end of the adversarial stage and communicate its decision to the parties within 30 days. However, in practice, these terms are often extended due to the backlog of cases pending before the Office. The decision rendered by the Opposition Committee may be appealed before the Office's Appeals Committee within 30 days of its communication date.
A trademark's registration is considered finalised once the trademark application can no longer be subject to oppositions or, if an opposition has been filed, once the decision in relation thereto has become final. The legal fees for the issuance of the registration certificate must be paid within 30 days from the date on which the registration procedure is deemed finalised. This date is usually notified by the Office to the applicant or its representative, but the aforementioned fees may be also paid voluntarily, prior to receiving the Office's notice in such respect.
Certificates are usually issued within approximately one month or less from receipt of the final registration fees. The Office does not issue electronic certificates – they are in paper form only.
In total, a national trademark registration procedure in Romania takes approximately nine months from the filing date, provided that the application faces no provisional refusals or third-party oppositions, which would lead to a much lengthy procedure (at least one year).
Since the Office does not monitor ulterior identical or similar third-party applications or raise ex officio refusals on relative grounds, further to obtaining trademark protection, trademark owners are advised to monitor any unauthorised third-party use of their trademarks or similar signs in the relevant territories, as well as any ulterior identical or similar trademark applications filed for identical or similar goods in Romania. Brand owners should take active measures against any potential infringement to enforce their IP rights.
For further information on this topic please contact Zsófia Judit Halmágyi or Andreea Bende at Simion & Baciu by telephone (+40 31 419 04 88) or email ([email protected] or [email protected]). The Simion & Baciu website can be accessed at simionbaciu.ro.