Recent amendments to Romanian Trademarks Law
Procedural aspects


In Romania, opposition procedures can be raised against pending trademark applications within two months from the application's second publication in the Official Bulletin. Thus, interested parties can oppose the decisions by which the applications were accepted upon completion of their absolute grounds examination, which is performed ex officio by the authority.

The relative grounds for refusal that can be relied upon in opposition procedures (as well as in cancellation procedures on relative grounds) are provided under article 6 of Romanian Law No. 84/1998, republished, on trademarks and geographic indications (the Romanian Trademarks Law).

Transposed from the EU Trademarks Directive(1) into national law in July 2020, the relative grounds for refusal that can currently be invoked in Romania pursuant to the provisions of article 6 of the Romanian Trademarks Law follow those applicable at EU level before the EU Intellectual Property Office.

Recent amendments to Romanian Trademarks Law

A welcome change that was adopted with the transposition of the EU Trademarks Directive in terms of the relative grounds for refusal of a trademark application or for the cancellation of a subsequently registered mark is the amendment of article 6(3) of the Trademarks Law. The amendment clarified that earlier rights deriving from the registration of an earlier reputed trademark in Romania or in the European Union can also be invoked when the conflicting trademarks refer to identical or similar products or services. Under the previous law, such provisions were only applicable to marks that designated different goods or services, an aspect that had been rather difficult to rely upon in practice.

Another change to the relative grounds for refusal currently provided under the Romanian Trademarks Law relates to the elimination of the condition of proving the use of the earlier mark abroad, when invoking the applicant's bad faith in pursuing the contested application. The provisions adopted in July 2020 and currently in force stipulate now only the condition for the ulterior mark to be confused with a previous trademark that was protected abroad.

Thus, in addition to the "classic" or "most commonly encountered" relative grounds relied upon in opposition cancellation procedures – relating to the identity or similarity of signs, the likelihood of confusion, the reputation of the earlier Romanian or EU trademark, and the unfair advantages and detriment to the distinctive character or reputation of such earlier mark – the following can be relied upon as relative grounds for refusal under the Romanian Trademarks Law:

  • the rights deriving from an application for registration of a designation of origin or a geographical indication filed in accordance with national or EU law that precedes the filling date of the contested trademark (or its priority date, as applicable), when the respective designation of origin or geographical indication confers on the person authorised to use it the right to prohibit the use of a subsequent mark in Romania. This is conditioned, of course, upon the eventual registration of the designation of origin/geographical indication;
  • the rights over a sign that existed prior to the filing date of the contested application (or, if applicable, its priority date) if that sign entitles its proprietor to prohibit the use of a trademark that was subsequently filed in Romania;
  • if the trademark's registration is requested by the agent or the representative of the trademark owner, in their own name and without the consent of the trademark owner, unless the agent or the owner's representative justifies their approach;
  • a previous right – in particular, a right to a name, an image, a copyright or an IP right;
  • if the mark can be confused with an earlier mark protected abroad, provided that the applicant acted in bad faith at the filing date of the contested application.

Procedural aspects

From a procedural perspective, the opposition procedure can be launched before the authority by drafting and filing an opposition notice within two months of the publication date of a trademark's granting decision (ie, its second publication date). The opposition notice needs to specify the relative grounds relied upon, along with the prior rights invoked and a brief reasoning of the case and must attach the proof of payment of the official fees applied by the authority.

The opposition notice thus filed is communicated by the authority to the applicant, informing them that the procedure provides for an initial term of two months for the parties to discuss the amicable settlement of the matter. A similar notice should be also communicated to the opponent with the purpose of giving both parties visibility of the date when the "cooling-off term" allowed for settlement discussions ends. In practice, however, the opponent does not always receive such communication and, given that the exact date when the "cooling-off" term is not clearly specified within the notice, each party calculates the expiry of the two-month term based on the date on which the notice was received at its end.

The "cooling-off" term may be extended at both parties' request for an additional term, which cannot surpass three months.

At the end of the "cooling-off" stage, the adversarial part of the procedure begins. The opponent is invited by the authority, through a written notice, to file the arguments and evidence it intends to rely upon in support of the opposition within 30 days.

The opponent's submission to this effect is further communicated to the applicant, who is also granted a term of 30 days for submitting its observations in defence. Recent practice reveals that this latter submission is also communicated by the authority to the opponent, but only for information purposes, given that the law does not provide for an additional round of arguments to be submitted by the parties.

If the applicant exercises its right to request evidence of use for the earlier marks relied upon in the opposition, the opponent is notified in this respect by the authority and invited to submit evidence for the Romanian or EU territory (as the case may be) within two months from the authority's official notice. If the opponent does not file the requested evidence of use, the opposition is rejected according to law, without any further examination performed by the authority.

Once the adversarial stage of the procedure is completed, the examiners must rule on the opposition within two months and further communicate the decision to the parties within 30 days of making the ruling. In practice, these terms are often extended due to the backlog of pending cases before the examiners.

Decisions rendered in opposition procedures can be further contested before the Appeals Committee of the Romanian authority in a term of 30 days from their communication date.

For further information on this topic please contact Andreea Bende at Simion & Baciu by telephone (+40-31 437 80 13) or email ([email protected]). The Simion & Baciu website can be accessed at


(1) 2015/2436/EU.