Legislative framework and causes of action
Trademark law, rules and regulations
Romanian trademarks are governed by Law 84/1998 regarding trademarks and geographical indications (the Trademarks Law). Although the law is based on the EU First Trademarks Directive (89/104/EEC), it has been amended several times to reflect Romania’s EU and international obligations. The most significant amendment occurred in May 2010, but several other more limited amendments have taken place since then.
At the international level, Romania is a member of the World Trade Organisation and a signatory to the Agreement on Trade-Related Aspects of Intellectual Property Rights. It is also a party to the Paris Convention for the Protection of Industrial Property, the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Trademark Law Treaty, the Singapore Treaty on the Law of Trademarks, and the Nice and Vienna Agreements.
The EU Trademark Regulation (2015/2424) and its implementing regulation have direct effect in Romania and decisions of the European Court of Justice on the interpretation of EU law are binding on the Romanian courts. The EU IP Enforcement Directive (2004/48/EC) was implemented in Romania (at least in respect of industrial property) by means of Government Emergency Ordinance 100/2005 and refined by means of Articles 978 and 979 of the Civil Procedure Code. In addition, EU Regulation 608/2013 concerning customs enforcement of IP rights is mirrored in Romania by provisions in Law 344/2005 on certain measures to ensure the protection of IP rights by customs measures (currently in force).
Romania protects national trademarks under a registration system, based on first-to-file priority rules. The Trademarks Law provides that the Romanian State Office for Patents and Trademarks (OSIM) has sole state registration authority for trademarks, patents, designs, geographical indications, semiconductor topographies and utility models. The procedure for the prosecution of trademark applications is governed by the Trademarks Law Implementing Regulation, adopted via Government Decision 1134/2010.
All civil litigation concerning trademarks follows the rules prescribed by the Civil Procedure Code, whereas criminal law actions concerning trademarks follow the rules prescribed by the Criminal Procedure Code, except where the Trademarks Law provides for special rules.
Causes of action
Trademark litigation can arise out of appeals against administrative decisions of OSIM; in civil matters it can be initiated directly in court or, for criminal matters, begin by means of a criminal complaint.
Any OSIM decision concerning the registration of trademarks, or the registration of licences or transfers of rights, can be appealed to a specialised board of OSIM. The board’s decisions can be contested before the Bucharest Tribunal and the latter’s decisions are susceptible of judicial appeal before the Bucharest Court of Appeal.
A claim can be filed directly with a court where it concerns:
- an infringement of rights in a trademark, where a similar or identical sign is used for products or services that are:
- similar or identical to those for which the trademark is protected, where no identity exists, but there is nonetheless a likelihood of confusion, including the risk of association between the trademark and the sign; or
- different from those for which the trademark is registered, where the trademark is well known in Romania and use of the sign without authorisation would harm the distinctive character or the renown of the trademark;
- the revocation of rights in a trademark, where:
- there has been no genuine use of the trademark in Romania for a continuous period of five years from registration;
- the trademark has become generic:
- the trademark has become deceptive: or
- the trademark was registered by a person other than the applicant or holder;
- the annulment of a registered trademark, where:
- the trademark falls under one or more of the absolute grounds for refusal (not a ‘sign’; cannot be represented graphically; cannot distinguish the relevant products or services; lacks distinctiveness; is deceptive or illicit);
- the trademark falls under one or more of the relative grounds for refusal:
- It would infringe a prior trademark, a prior right to an unregistered trademark or to a sign used in trade, or another prior right (especially a right to a name, image, copyright or industrial property right);
- It is identical or similar to a lapsed collective, certification or regular trademark before the time limits specified by law are met;
- It could be confused with a trademark that was, at filing, and continues to be in use abroad, where the later trademark was applied for in bad faith; or
- The application for the trademark was made by the representative of the trademark owner in his or her own name and without the consent of the trademark owner, where the representative cannot prove that he or she is authorised to apply for the trademark;
- the trademark application was filed in bad faith;
- the trademark infringes a right to image or a patronym; or
- the trademark infringes prior industrial property rights or a copyright.
A criminal complaint can be filed on the grounds of counterfeiting or marketing products bearing a sign that is identical or similar to a trademark registered for similar or identical products.
Besides the causes of action indicated above, both civil claims and criminal complaints can be filed under Law 11/1991 for combating unfair competition:
- where there is use of a trade name, emblem or packaging which is likely to cause confusion with that of another trader; or
- where products or services are produced, imported, exported, offered for sale or sold bearing false indications concerning trademarks meant to deceive other traders and consumers.
Alternative dispute resolution
Both mediation and arbitration are available, but neither is mandatory under the law. Mediation can be chosen by the parties to the dispute before or during the filing of a claim with a court; where parties choose mediation after the claim is filed, prosecution of the claim is suspended pending resolution by mediation. The parties can abandon mediation at any point.
Arbitration can confer jurisdiction upon an arbitral tribunal only where the parties agree in writing to refer the dispute to an arbitrator. Such agreement is then binding upon the parties; therefore, once jurisdiction is transferred to the arbitrator, the parties cannot transfer jurisdiction back to the courts. The parties are free to choose the place of arbitration and the arbitral court, the applicable law and regulations, the rules of procedure to be followed (from those available in the chosen court), the language of the proceedings and the composition of the tribunal. The decision of the arbitral tribunal is binding upon the parties and can be subsequently enforced just as any decision of a regular court.
Arbitration can also be sought where rights in trademarks are infringed by registration or use of a domain name, pursuant to the Uniform Domain Name Dispute Resolution Policy.
Litigation venue and formats
Court system and litigation venues
The court system in Romania is hierarchically organised into district courts, tribunals, courts of appeals and the High Court of Cassation and Justice.
In trademark litigation, the jurisdiction of the courts is as follows:
- District courts normally handle applications to enforce court decisions relating to trademark matters.
- Tribunals are the first-instance courts for claims concerning infringement of trademark rights; territorial jurisdiction normally rests with the tribunal where the defendant is headquartered. The Bucharest Tribunal (via specialised panels in a civil division) has exclusive jurisdiction over claims concerning infringement of EU trademarks and counterclaims for annulment thereof, claims for annulment and revocation of trademark rights and appeals against administrative appeals decisions of OSIM. Tribunals also have exclusive jurisdiction in criminal proceedings over appeals against decisions of the prosecutor to close a criminal investigation. Tribunals have first-instance jurisdiction over criminal cases of counterfeiting. Tribunals also have first-instance jurisdiction over civil claims for unfair competition involving trademarks.
- Courts of appeal have first-instance jurisdiction in trademark matters only in limited criminal cases; they mainly act as appellate courts for trademark decisions issued by the tribunals. The Bucharest Court of Appeal handles appeals from the Bucharest Tribunal and is the only appellate court with specialised IP panels in one of its civil divisions.
- The High Court of Cassation and Justice has first-instance jurisdiction in criminal trademark matters in some very limited cases. In civil matters, the High Court is a court of final appeal against decisions issued on appeal by a court of appeal, where the Civil Procedure Code allows for such final appeal to be filed (ie, where the damages exceed Lei500,000 – approximately €111,000).
With regard to applications for provisional measures, tribunals (most often the Bucharest Tribunal) have jurisdiction. Provisional measures can be ordered ex parte, but appeals against first-instance decisions are always inter partes.
There is little room for forum shopping in trademark litigation, as the Trademarks Law provides for the exclusive jurisdiction of the Bucharest Tribunal in many situations. The only possibility lies in civil claims for trademark infringement or for unfair competition where, by including defendants with different seats, the plaintiff can choose the tribunal at the seat of one of them to file the claim. However, where a defendant can show that it was included in the claim only for the purpose of forum shopping, the court can decide to have the case sent to the tribunal with jurisdiction over the seat of the true main defendant. In claims for unfair competition, the tribunal at the place where the unfair act was committed can also retain first-instance jurisdiction.
As for international forum shopping, Romanian courts have decided that they have jurisdiction over provisional measures to protect trademark rights even if the main claim for infringement would fall under the jurisdiction of a foreign court or arbitral tribunal, under the principles established by the European Court of Justice in Van Uden (Bucharest Court of Appeal, Fourth Civil Division, Decision 456R of May 11 2016).
The Civil Procedure Code also provides that, absent an agreement to the contrary, Romanian courts also have jurisdiction over claims concerning the protection abroad of the IP rights of a person domiciled in Romania.
Jury versus bench
There are no jury trials in Romania, not even in criminal matters; therefore, all trials are bench trials, with the decision being made solely by the judge or panel of judges hearing the case. The judge or panel is vested to rule on all claims brought by the plaintiff by means of the same decision.
Damages and remedies
In trademark infringement proceedings the trademark owner can seek:
- an order that the defendant (or, in some cases, even third parties) provide all evidence and information;
- a permanent injunction to cease the infringing acts or to forbid such acts for in future;
- damages to cover real losses, calculated by reference to either loss to the owner, benefits to the infringer and other factors such as moral damage to the owner or, if impossible, by setting a fixed amount on the basis of royalties that would have been owed by the infringer had authorisation for use been sought;
- withdrawal or destruction of infringing goods or related materials;
- legal costs; and
- publication of the court’s decision.
In civil unfair competition claims, the trademark owner can seek:
- a permanent injunction;
- damages (moral and economic);
- legal costs; and
- publication of the court’s decision.
In provisional measures claims on trademark infringement, the owner can seek:
- a provisional injunction until the main infringement claim is finally decided or the defendant deposits security;
- provisional measures to secure evidence – usually by means of a court bailiff;
- seizure of allegedly infringing goods; and
- seizure of goods, freezing of bank accounts or other assets, and communication of banking, financial or commercial documents.
In provisional measures claims, the owner can be ordered to deposit a security to ensure payment of damages caused to the defendant if the main claim for infringement is found to have been unfounded.
Provisional measures can be granted before filing a main claim for infringement; such measures will become automatically void if a main claim is not filed within the deadline set by the court, which cannot be more than 30 days after the date on which the provisional measures were ordered. This is particularly frustrating because, although the Civil Procedure Code recommends that the courts provide the grounds of a decision on provisional measures within 48 hours of the ruling, the courts tend to take much longer, during which time enforcement of the provisional measures is impossible. Meanwhile, the defendant can easily find out online the measures ordered against it, including securing evidence in danger of being destroyed by that very defendant.
In cases of unfair competition, the mark owner can also apply for a provisional injunction ordering the defendant to cease the act complained of until the court has issued its decision with regard to the main claim.
Injunctive relief is available both as provisional relief (obtained by means of a ‘fast track’ presidential ordinance) and as permanent relief. A plaintiff must apply for the latter as part of its main claim for trademark infringement; the court makes a decision regarding the permanent relief sought as part of its final decision on the main claim. The court bailiff with geographical jurisdiction can enforce each type of relief following an application to the court. There is some controversy regarding the possibility of enforcing an obligation to abstain other than through the imposition of fines. Therefore, non-compliance with any injunctive relief granted will normally result solely in monetary compensation and will not be considered contempt of court; nor will it open up the possibility for the plaintiff to obtain stricter measures against the injunctee.
Evidencing the case
Investigations and first steps
The mark owner can conduct a private investigation before filing any type of claim; any evidence can be presented in support of a claim, but it is susceptible to rebuttal by the defendant (eg, because witness statements cannot be used to contest the contents of a writ). The Civil Procedure Code allows for some evidence to be gathered with the assistance of a court bailiff; such evidence has a higher probative value than evidence submitted directly by the parties.
Surveys are rarely used in trademark litigation in Romania, since they are deemed not to constitute definitive proof of likelihood of confusion, the determination of which is the prerogative of the court.
Surveys are used, however, in order to substantiate claims of higher distinctiveness, of the mark being well known or of the mark enjoying a degree of recognition among a given target audience.
So far, no court decision in Romania has outlined the criteria that surveys must meet in order to be admissible as evidence in trademark litigation.
Use of expert witnesses
Expert witnesses are normally not used in trademark litigation, other than in the form of certified accountants assessing damages. Witness statements on the existence of a likelihood of confusion have not been regarded as pertinent evidence of infringement or lack thereof, the test being a legal one and within the exclusive prerogative of the courts.
The most common defence in trademark infringement litigation is the absence of a likelihood of confusion.
A counterclaim for trademark annulment or revocation is commonly used, whereby the defendant claims that the trademark lacked either distinctive character at the time of filing or has become a generic designation. Some defendants also argue that the law does not allow trademark owners to prohibit the use of the descriptive elements of a mark (ie, the goods or services characteristics).
Defendants can also argue that the use was nominative (ie, a reference to describe its own product or to compare the plaintiff’s product to its own) and therefore excluded from the scope of protection of the plaintiff’s trademark rights.
Another defence is use of one’s own name or trade name.
An appeal must be filed within 30 days of the reasoned court decision being served upon the party filing the appeal. In provisional measures claims, however, an appeal against the first-instance decision must be filed:
- within five days of the court decision, where granted ex parte, even if the court has not issued the grounds for the ruling by that time; or
- within five days of the reasoned court decision being served upon the party filing the appeal, where the decision is granted inter partes.
Where an appeal is filed before the first-instance court has served its decision, the appellant has another five days from the moment it is served with the grounds for the decision to supplement its application with its grounds for appeal.
Appeals in trademark cases are normally within the jurisdiction of the courts of appeal. The parties can submit new evidence and the court may be vested with a de novo review of the first-instance decision, depending on the limits of the appeal set by the appealing parties.
A second (or final) appeal is available for a limited set of grounds and only for certain claims (with a value exceeding Lei500,000 – approximately €111,000). In such cases, the evidence allowed is normally limited to writs and, when within the jurisdiction of the High Court, can result in the appealed decision being vacated and the case remanded either to the first-instance court or to the court of appeal for retrial. In such cases, the lower courts are bound by the limits set by the High Court in the decision on the final appeal.
Mu?at & Asocia?ii
43 Aviatorilor Blvd
1st District 011853
Tel +40 21 202 59 00
Fax +40 21 223 39 57
Anca Buta Mu?at Partner [email protected]
Anca Buta Mu?at has extensive experience in dealing with a vast range of cases in various fields covering IP, antitrust and pharmaceutical law. During her tenure at Mu?at & Asocia?ii, she has served as leader of the litigation teams engaged by clients from industries such as retail, cosmetics, pharmaceuticals, telecommunications and media, IT and fashion, with the task of devising complex strategies in order to protect and enforce their trademarks in Romania.
Her litigation team – one of the strongest in the Romanian IP legal market – also handles highly complex copyright cases and intricate patent annulment and infringement in state-of-the-art matters such as standard-essential patents and their impact on the market, as well as matters of delayed generic entry.
Paul George Buta Partner [email protected]
Paul George Buta is a partner in the IP, competition and life sciences department of Mu?at & Asocia?ii, with over 10 years’ experience in the field. His practice focuses on complex projects involving both assistance with and representation of a significant portfolio of international clients (mainly foreign investors and multinationals) on issues pertaining to IP law, competition and dispute resolution proceedings.
Mr Buta holds a PhD in IP law and is an assistant professor at the Nicolae Titulescu Faculty of Law. He contributes regularly to scholarly work on intellectual property in Romania and abroad. He has led numerous precedent-setting cases on key IP issues, including the scope of protection for colour trademarks and the use of surveys in IP infringement proceedings.
This article first appeared in World Trademark Review. For further information please visit www.worldtrademarkreview.com.