Unregistered trademarks are protected under Romanian law if they are recognized as well known. Other commercial signs, such as trade names and company logos, enjoy some level of protection under trademark and unfair competition law.
By enacting its 1967 Trademark Law, Romania adopted the first-to-file priority system that grants trademark protection primarily to registered trademarks.
However, unregistered trademarks also enjoy protection in Romania in compliance with Article 6bis of the Paris Convention for the Protection of Industrial Property. Thus, under the 1967 Trademark Law an application to register a trademark that was identical or similar to another mark that was well known in Romania was rejected if the application was filed for products or services similar to those to which the well-known mark applied.
1998 Trademark Law
The current Trademark Law, adopted in 1998, expressly defines a ‘well-known trademark’ as a “widely known mark to the relevant segment of the public … without registration or use being required”. This definition means that the law grants protection to unregistered trademarks only if these are well known.
The Trademark Law provides that the following non-exhaustive set of criteria should be considered when determining whether a mark is well known in Romania:
- the initial or acquired distinctiveness of the mark;
- the scope and length of use of the mark;
- the scope and length of advertising of the mark;
- the geographical area of use of the mark; and
- the degree of familiarity of the relevant public with the mark.
In addition, Rule 16 of the Trademark Law Governing Rules contains a supplemental set of criteria which have often been used by courts and the Romanian Patent and Trademark Office (RPTO) in order to determine whether a mark is well known. Under these criteria, it is sufficient to establish that the mark is well known:
- in the Romanian territory; and
- by the relevant segment of the public.
The governing rules further establish methods for:
- determining the relevant public segment by identifying potential consumers of certain goods or services;
- determining distribution chains and marketing means;
- defining the evidence required to prove sale, as well as promoting the products and/or services to which the trademark refers, including the publication and the representation thereof at fairs and exhibitions);
- defining the degree of use as the quantity of goods and/or services to which the trademark applies and which are marketed;
- defining the relevant geographical area as the territory of Romania and/or neighbouring territories, where the Romanian language is spoken and/or territories covered by the same media and/or countries that have close commercial ties with Romania; and
- defining the degree of familiarity with the mark as the extent of coverage on the Romanian market, as a result of the use for certain goods and/or services.
The opening of Romania’s borders in 1990 led to a significant increase of applications to register marks that were identical, or visually or aurally similar, to other signs. It is to be noted that although the law specifically provides that registration and/or use in Romania need not be evidenced when claiming that a trademark is well known, the governing rules provide that whoever makes such a claim also carries the burden of proving it by submitting documents showing, among other things, marketing and advertising efforts.
Accordingly, the doctrine and case law have been developed on the basis of the above criteria and the principle of onus probandi incumbit actori (ie, the onus of proof lies with whoever makes an allegation). This principle, however, creates a risk of either:
- making life difficult for owners of well-known marks; or
- seeing the courts so overwhelmed by evidence submissions that they eventually decide that any welladvertised mark is a well-known mark.
Because of limited access to information and the inexperience of its examiners, in the 1990s the RPTO granted protection to unregistered marks even when only scant evidence of sales or advertising was filed. Similarly, the courts granted protection to unregistered well-known marks on the basis of some foreign advertising, duty free sales and trademark registration certificates from other countries.
However, case law started to change in 2000 after IP practitioners had voiced their concerns with the RPTO. The most notable change was the creation in 2004 of specialized IP panels within the Bucharest courts, including the Court of Appeal and the Supreme Court of Justice. Solid case law has been developed since then, although it was not until 2007 that a specialized panel of the Bucharest Court of Appeal held in a groundbreaking decision that the governing rules should not be applied where the Trademark Law clearly requires neither trademark use nor registration in Romania.
Company Law and Trade Registry Law
Romania adopted its current Company Law and Trade Registry Law in 1990. Together with the 1991 Unfair Competition Law, they provide some protection to various commercial signs such as trade names and company logos.
Under the Company Law, trade names are an essential attribute of a company. Each newly created company must register its name, which must be different from existing company names.
In contrast, the registration of a company logo is optional. However, the Unfair Competition Law provides that company logos enjoy the same scope of protection as trademarks or trade names.
Trade name cancellations
Article 8 of the Paris Convention provides that “a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”. Nevertheless, the Romanian Parliament enacted a Trade Registry Law (as yet unamended), which leaves the door open to trade name piracy. While the law prohibits the registration of trade names that are identical to existing trade names, no such ban exists on the registration of similar names. This means that trade name holders are often unable to cancel a similar trade name.
Moreover, the law provides that adding descriptive or indistinctive elements such as ‘leasing’ or ‘services’ to a prior registered name is sufficient to meet the threshold of distinctiveness and obtain a trade name registration. This is a serious issue for multinational companies and brand owners.
Even though Romania adopted the Paris Convention in 1920, the interpretation of the Trade Registry Law made by its governing rules means that trade name protection in Romania is limited. In response to requests to block or cancel the registration of a similar junior name, the RPTO typically states that the registration was accepted “according to the law”.
However, since 2004 the courts have recognized that an earlier trade name is a valid basis on which to oppose an application for, or seek cancellation of, the registration of a similar trade name. The courts thus uphold the constitutional principle that international treaties and conventions prevail over national law; this effectively gives priority to Article 8 of the Paris Convention over the provisions of the Trade Registry Law.
Unregistered trademarks are protected in Romania provided that the RPTO or a court of law establishes that the mark is well known in Romania pursuant to the list of criteria contained in the 1998 Trademark Law – that is, after assessing:
- the initial or acquired distinctiveness of the mark;
- the scope and length of use;
- the scope and timeframe of any advertising;
- the geographical area of use; and
- the relevant public’s degree of familiarity with the mark.
Protection of other commercial signs, such as trade names or company logos, is recognized under:
- the 1998 Trademark Law;
- the 1991 Unfair Competition Law; and
- Article 8 of the Paris Convention