Andreea Bende June 20 2022 Preliminary injunction claims raised in IP conflicts in Romania: legal background and recent court practice SIMION & BACIU | Intellectual Property - Romania Andreea Bende Intellectual Property ApplicabilityMeasuresConditionsProcedureEnforceabilityCase lawAccording to the provisions of article 979(1) of the Romanian Code of Civil Procedure, the Romanian courts may issue preliminary injunction orders for provisional measures if an IP rights holder submits credible evidence that its rights are subject to an actual or imminent act of infringement and such act gives rise to damages that would be very difficult to repair.ApplicabilityThis provision is relevant to all types of IP right (eg, copyright, trademarks, geographical indications, inventions, designs and models and new plant varieties) and is applicable regardless of the object of protection (ie, patrimonial rights or non-material (moral) rights).MeasuresAccording to law, the courts may order:the temporary cessation of the infringing acts;measures to secure movable and immovable property infringing copyright, including the freezing of bank accounts (such measures are specifically regulated by the Copyright Law);the institution of a guarantee to be paid by the defendant, aimed at compensating the plaintiff; andnecessary measures towards ensuring that the evidence relevant for the case on the merits are conserved (while ensuring that any confidential information pertaining thereto is protected) – for example:the seizure of objects and documents that prove copyright infringement; andthe provisional seizure of infringing goods and the materials and tools used to fabricate and/or distribute them.According to article 9(2) of the government's Emergency Ordinance 100/2005 on ensuring the observance of IP rights, these measures may also be ordered against an intermediary whose services are used by a third party with the purpose of infringing a protected IP right.In addition, if the measures ordered are liable to cause any harm to the defendant, the court may also rule that the plaintiff posts a bail of an amount established by the court. If the plaintiff fails to pay the required amount, the ordered measure(s) may be ceased. Any such measures ordered by the court would have a temporary effect until the action on the merits raised against the defendant is finalised.ConditionsFor the court to rule in the plaintiff's favour and grant the injunction, the following conditions must be met:The plaintiff must prove that the temporary measures are urgently required to stop the alleged infringement and for the harm caused by the illicit acts to be ceased.The measures that the plaintiff requests from the court must be provisional.At a prima facie analysis of the conflict, the court must be able to find that the defendant has infringed upon the plaintiff's rights or that there is a risk of an imminent infringement.The court's evaluation of the injunction claim must not prejudice an examination of the merits of the case. This means that the court must perform only a prima facie examination of the claim and must be able to rule on the injunction and on the fulfilment of all the conditions listed above without looking at the merits of the case.ProcedurePreliminary injunction claims are urgent procedures brought before the competent court that would also have competence to trial the case on the merits. Usually, the court's ruling in such cases is rendered in an expedited manner. Ideally, this would take place:within seven to 14 days from the claim being filed (in most cases, the ruling before the first court is issued within approximately three weeks to a month); andbetween 48 hours to one week from hearing the parties' arguments – the rule imposed by law is that the ruling must be rendered within 24 hours from the parties' debates.In cases of extreme urgency, the ruling may be also issued on the same day and without summoning the parties, based on the documents and evidence submitted before the court.If the action on the merits was not submitted concomitantly with the injunction claim, the ruling on the injunction will include the term imposed by the court for the action on the merits to be also initiated. This time limit, however, cannot exceed 30 days from the issuance of the injunction order. If no term is specifically indicated in the court's ruling on the injunction, the 30-day term becomes applicable. If the plaintiff does not launch the action on the merits within this term, the injunction ceases to take effect. Given the urgent nature of the claim, all evidence that would require an extended term for their administration (ie, the defendant's interrogation, witness depositions and expert reports) would be found inadmissible by the court.EnforceabilityThe court's ruling on the injunction claim is immediately enforceable and, depending on the circumstances of the case, may be ordered to be performed without any prior notice to the defendant. However, the defendant(s) may seek to postpone its execution until the ruling on an eventual appeal, by filing a suspension claim, which is ruled upon by a court of appeal. The decision on suspension rests at the sole discretion of the court that is trialling the appeal, but such a decision can be ordered only if the defendant pays a bail of an amount established by the court. This amount cannot be higher than 20% of the plaintiff's monetary claim (if applicable) or, in the case of non-monetary claims, the bail will not exceed 10,000 Romanian leu (approximately €2,100).Case lawGenerally, when preliminary injunction claims are targeted at defendants that are using ulterior signs which are in conflict with previously registered rights, but which were, in their turn, also protected as IP rights (eg, through an ulterior trademark registration), they are dismissed by the courts of first instance based on the fact that the condition relating to the appearance of right is not met. This is because an appearance of right, in such cases, may also work in favour of the defendant, which can claim that it is using rights that were legally protected in its portfolio. Recent court practice is, as a rule, to the disadvantage of the plaintiff claiming apparent rights if the defendant has (also) used or is using a legally protected right (eg, through ulterior trademark registrations with the State Office for Inventions and Trademarks).Nevertheless, a recent ruling issued by the Ilfov Tribunal in May 2022 revealed a shift in the courts' approach to preliminary injunction claims. The Tribunal granted the claim filed by the plaintiff even though the defendant had claimed to also have exclusive rights over the contested signs, which were secured in its portfolio through trademark protection. Moreover, the Tribunal did not set a bail for the plaintiff, which made the favourable solution particularly uncommon.The claim related to a copyright infringement over the design of several labels and trade dress materials that had been created by the plaintiff and used on the market by the defendant without the plaintiff's authorisation. The ruling is currently subject to an appeal and the defendant has secured the suspension of the injunction's effects until a decision is rendered in the appeal.If the plaintiff's action on the merits is ultimately rejected as ungrounded, the defendant may seek the reparation of any damages caused through the interim measures that were ordered by the court pursuant to the injunction claim. Nevertheless, if the plaintiff is not at fault or only slightly at fault, the court, upon reviewing the particular circumstances of the claim, may deny the request for damages filed by the other party or order their reduction.For further information on this topic please contact Andreea Bende or Cristiana Prodescu 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.