A new trademark law entered into force in Romania on July 13, 2020. It transposes into national legislation Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the EU member states relating to trademarks. The most important changes are explained below.
Elimination of Graphical Representation Requirement
The graphical representation requirement no longer applies when submitting a trademark application, meaning that a sign can be represented in any form that distinguishes the goods or services applied for from those of other undertakings and enables the authorities to clearly establish the scope of protection that is sought.
Literal Interpretation of Class Headings
The law adopts the literal approach when interpreting the scope of protection. This applies when class headings are used in lists of goods and services in trademark applications and registrations. The owners of existing registrations using class headings will have the option of clarifying the scope by filing, before September 30, 2020, a declaration in which they will specify the list of goods or services intended to be covered.
Absolute Grounds for Refusal or Invalidity
The law extends the absolute grounds for trademark refusal or invalidity by adding the words “or another characteristic” to the relevant article in the law, meaning that now the restrictions apply not only to shape signs but to other types of signs as well. Namely, according to the law, signs can be refused if they consist exclusively of the shape, or “another characteristic”, which (i) results from the nature of the goods themselves, (ii) is necessary to obtain a technical result, or (iii) gives substantial value to the goods.
The law also introduced an additional absolute ground for refusal – a sign cannot be registered if there is a conflict with an existing designation of origin, geographical indication, traditional term for wine, traditional speciality guarantee or a plant variety.
New Examination Procedure
Once the PTO examines an application on absolute grounds, any person can file an observation based on absolute grounds within two months from the application’s publication date. Once the PTO examines the application on its merits and issues a grant decision, oppositions based on relative grounds may be filed within two months from the publication date of the grant decision.
Opposition proceedings may be suspended for two months to allow the parties to settle the dispute amicably (cooling-off). This period may be extended by a maximum of three additional months. If the parties do not reach a negotiated settlement by the end of the cooling-off period, the opponent can supplement his opposition with further arguments or evidence within 30 days. The applicant is then allowed to respond within 30 days from receiving the opponent’s arguments and/or evidence.
Previously, oppositions could be filed within two months from the application’s publication date, and the previous law did not contain any provisions regarding the cooling-off period.
Grounds for Appeal
According to the previous law, interested parties who missed the deadline for filing an opposition could file an appeal against the registration of a later trademark, on relative grounds, within 30 days from the registration’s publication date. This is no longer possible under the new law.
The deadline for filing a response to a provisional refusal was shortened from three months (with the possibility of a three-month extension) to only one month (with the possibility of a one-month extension), while the deadline for filing a disclaimer at the PTO’s request was shortened from two months to 30 days. The deadline to remedy the deficiencies in an application is now 30 days instead of three months. Finally, the deadline for filing documents in support of a priority claim is 30 days instead of three months.
The law broadens the concept of trademark infringement by establishing additional uses of similar or identical signs that may be prohibited by trademark owners, namely:
- Use of a sign as a company name or as part of a company name (however, the law does not clarify, like Directive (EU) 2015/2436 does, that in order to be prohibited, such use has to be made for the purposes of distinguishing goods or services);
- Use of a sign in comparative advertising in a way contrary to the provisions of the Misleading and Comparative Advertising Act No. 158/2008; and
- Use of a sign on packaging, labels, tags, security or authenticity features or devices, and placing these on the market.
Revocation and Declaration of Invalidity
Starting from January 14, 2023, the Romanian PTO will be entitled to handle applications for revocation and declaration of invalidity (now handled by the Bucharest Court). The plaintiff will be able to choose whether to bring an action before the Romanian PTO or the Bucharest Court. Until then, revocation and invalidation actions will continue to be handled only by the court.
The new law was adopted following the European Commission’s July 2, 2020 decision to refer Romania to the Court of Justice of the EU for failing to communicate its transposition measures of the Directive (EU) 2015/2436.
Amendments to the Implementing Regulations of the Trademark Law are expected to be published by September 13, 2020.