Changes to trademark protection legislation
Translations of documents
Invalidity and revocation actions


2022 was without a doubt an interesting year, with many developments in the IP world, both in Romania and the European Union.

Changes to trademark protection legislation

In Romania, notable changes were made to the legislative framework regulating the protection of trademarks, with the enactment of substantial amendments to the Implementing Regulation of the Romanian Trademarks Law in Autumn 2022 (for further details, see "Changes to trademark legislation: what you need to know").

In practice, despite expectations of more expedited trademark applications after the enactment of these changes, the new stages introduced in the opposition procedure have resulted in a lengthier process in some instances. Where trademark applications now encounter third-party oppositions, it takes longer for a decision to be issued.

Nevertheless, despite taking longer, the opposition process is more transparent with regard to parties' submissions. The applicant's arguments are now forwarded to the opponent, who can file a new set of observations in reply – a possibility that was not available in the old framework. While this might translate into a more costly process for opponents, it is beneficial for the overall strategical approach of a case's outcome.

Further, the cooling-off stage introduced in the opposition procedure offers parties the opportunity to extend their negotiations to reach an amicable settlement. Cases are now increasingly being settled before they reach the adversarial stage before the Romanian Trademarks Office.

From a strictly formal perspective, the changes also resulted, as expected, in a more flexible approach on the part of the authority, with regard to its acceptance of electronic communications and electronic documents filed during opposition procedures (as well as in other adversarial or ex partes procedures). Parties can therefore submit all their arguments and supporting documents online or in an electronic form, if their volume does not justify a paper form submission, and e-signatures are accepted for such submissions.

However, when a filing involves a substantial number of annexes, it is not recommended to use the email filing system implemented by the authority, which can result in miscommunication or the partial communication of annexes. In some instances, annexes are still printed by the authority and sent in a paper form to the other parties involved in the procedure.

Translations of documents

Another change in practice that has developed over the last quarter of 2022 is to do with translations of documents filed before the authority. Despite having been a requirement in the past, the authority previously took a rather flexible or permissive approach when it came to evidence filed in a foreign language, meaning that evidence was usually accepted without translations and still taken into account in the evaluation of the case. Recently, this approach shifted: there are now clear indications in the authority's motivated decisions with respect to evidence that is not accompanied by its respective Romanian translation as early as the opposition stage. It is recommended that all documents filed in support of an opposition procedure are correspondently accompanied by their Romanian translations in order to avoid them not being taken into account by the examiners.

Invalidity and revocation actions

In addition to the changes to the Implementing Regulation mentioned above, Romanian Government Ordinance No. 169/2022 adopted additional changes to the Romanian Trademarks Law(1) in December 2022. These additional changes make it possible for invalidity and revocation actions to be filed either before the court of law or before the trademark authority. In the past, such procedures could only be brought in court – specifically, before the Bucharest Court of Law, which has special competence in dealing with IP matters.

This change derives from the transposition of the EU Trademarks Directive(2) as part of the trademark reform package. It is expected to enable more interested parties to access swift judgments in matters relating to trademark cancellations, irrespective of the grounds relied upon.

According to the new legal provisions, revocation and invalidity claims shall be examined by a committee specially appointed by the authority. The committee will comprise three members, one of which will be the committee's president.

Claims must be filed in writing, in paper form or by electronic means, and must clearly indicate:

  • the parties;
  • the particulars of the trademark that is intended to be cancelled and the goods and services targeted by the claim;
  • the prior rights relied upon (if applicable);
  • a detailed reasoning of the arguments on the merits; and
  • the evidence that the claimant wishes to rely upon in support of the claim, accompanied by its respective translation into Romanian.

The authority shall notify any deficiencies in the claim to the claimant. Any such deficiencies must be remedied within five days; otherwise, the claim will be rejected without further evaluation of the merits.

The respondent will have the opportunity to file its observations to the claim within 30 days from its communication. The respondent's response will be further communicated to the claimant, which may file another set of arguments within 10 days.

Similar to appeal procedures organised before the authority, invalidity and revocation procedures will also include an oral stage, with oral hearings scheduled before the committee charged with the analysis of the case. The first hearing shall be scheduled only after the respondent has filed its observations to the claim or once the legal term for it to do so has passed.

With regard to arguments on the merits, similar to the provisions of the EU Trademarks Regulation, revocation and invalidity claims can be launched on the following grounds.

Revocation claims may be filed if the registered trademark:

  • has not been genuinely used on the market for the goods or services protected in the legal term provided by law (ie, five years from its grant date or within the past five years, as the case may be) and there are no reasonable reasons for such non-use;
  • has become generic for the goods or services it designates as a consequence of the actions or inactions of its holder; or
  • has become misleading.

Invalidity claims may be filed if the registered trademark:

  • conflicts with a prior right belonging to a third party;
  • did not comply, at the filing date, with the legal requirements for being protected as a trademark, from the absolute grounds for refusal perspective;
  • was filed by an agent or representative without the owner's consent; or
  • was applied for in bad faith.

The possibility of pursuing these claims before the authority has been embraced by the Romanian IP world. It is hoped that this will result in a faster evaluation process for these types of conflicts, which, at times, can be lengthier and more costly when pursued in front of the court of law. Nevertheless, since the authority has not yet dealt with such proceedings, the quality of the authority's judgments in evaluating such conflicts remains to be seen and is expected to be under the spotlight for quite some time.

For further information on this topic please contact Andreea Bende at Simion & Baciu by telephone (+40 31 419 04 88) or email ([email protected]). The Simion & Baciu website can be accessed at simionbaciu.ro.

Endnotes

(1) Law No. 84/1998 on trademarks and geographical indications.

(2) No. 2015/2436.