The Trademarks Law Review: Romania
This chapter deals with the main amendments to the Romanian trademark law. The author was a member of the working group created by the Romanian Patent Office in 2016–2017 for the drafting of the amendments of the law, in her then capacity of president of the Romanian Chamber of Patent Attorneys.
Year in review
As mentioned above, the modification of the Romanian trademark law entered into force on 13 July 2020. According to the new provisions of the law, the examination of the mark applies around six months for absolute grounds and a further additional minimum of five months for relative grounds. Thus, the available time until the end of 2020 was insufficient for generating cases under the new law before the Romanian courts, arbitral tribunals and administrative bodies.
On 13 July 2020, Law No. 112/2020 for the modification of Law 84/1998 on trademarks and geographical indications entered into force, transposing the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks (the Harmonisation Directive) into national legislation.
Until the moment of this review, a new regulation in accordance with the modified trademarks law was not issued. Consequently, the old regulation that was not explicitly abrogated is still in force (except the provisions that would conflict with the modifications of the trademarks law) until the new regulation is adopted.
The relevant competent authorities for trademark matters are: the Romanian Patent and Trademark Office (ROPTO) as administrative body and the Municipal Court of Bucharest as judicial body together with the Court of Appeal of Bucharest. For enforcement, customs authorities and police are also involved.
Company names are dealt with by the Registrar of Commerce, whereas .ro domain names are dealt with by RoTLD.
iii Substantive law
The matters related to trademarks and geographical indications are covered by Law No. 112/2020 for the modification of Law No. 84/1998. They are discussed in detail in this chapter. Company names and domain names will only be touched on briefly.
Registration of marks
i Inherent registrability
The new trademarks law respects in general the provisions of Articles 4.1 and 4.3 of the Harmonisation Directive. In particular, it details the aspects related to Article 4(h), trademarks that have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Paris Convention. In addition to the mandatory provisions, there is one additional situation of inherent registrability; namely, the marks that contain without the permission of the owner, the image or the name of a person enjoying fame in Romania. The exceptions are the ones of the Harmonisation Directive; namely, when the mark has acquired a distinctive character before the date of application for registration or before the date of submitting the request for cancellation and when the distinctive character was acquired after the date of application for registration but before the date of registration. The possibility that the mark has acquired a distinctive character before the date of submitting the request for cancellation is new.
ii Prior rights (relative grounds)
The new trademarks law respects in general the provisions of Article 5 of the Harmonisation Directive.
iii Changes in respect of the registration procedure of the trademark according to the new trademarks law
The condition of graphic representation of the trademark no longer applies. According to the new law, a trademark may consist of any sign, including marks consisting of position, motion or multimedia.
Deadline for payment of the issuance of the registration certificate
Before the entry into force of the new trademark law, under the old law, the failure to pay the issuance of the registration certificate had no legal consequences. Therefore, the register was clogged with thousands of marks that were neither dead nor alive.
The new law introduces the obligation for the trademark applicant to pay the fee for the issuance of the trademark registration certificate within 30 days as of the date of completion of the registration proceedings. Where the fee is not paid in time, the trademark is deemed to be rejected.
This will have a positive effect on the number of active trademarks.
Declaration regarding the clarification of the list of goods
An essential feature of the new law refers to the fact that products and services covered by a trademark application must be identified with sufficient clarity and precision. Therefore, owners of Romanian national trademarks filed prior to 13 July 2020 that claimed the entire class heading included in the Nice Classification may file, until 30 September 2020, a declaration indicating in a clear, precise and specific manner the products and services, other than those expressly covered by the literal meaning of the class heading, that they originally intended to protect, subject to being included in the alphabetical list for that class in accordance with the Nice Classification edition in force at the time of filing the trademark application.
The main problem of this declaration is of a practical nature. In the draft of the law, a deadline of six months from the date of supposed entry into force was mentioned. However, the law entered into force much later, and the Juridical Commission of Parliament considered that two-and-a-half months was sufficient for submitting this declaration.
ROPTO issued partial clarifications at the end of August 2020, saying that this provision applies only to the cases when the entire class heading is affected and not to cases when only a part of class heading is affected (e.g., insurance in class 36). A major source of uncertainty is how services in class 35 will be considered and what happens to the class headings that cannot express literally the specification of the goods (e.g., building materials).
Inter partes proceedings
There are three types of inter partes proceedings: opposition, cancellation and exhaustion of rights.
Changes related to the opposition procedure
Reverse order of procedures
Under the old law, the application was published for opposition one week after filing. The opposition was examined by the commission at the same time as the examination on absolute grounds by the examiner. A joint decision on the opposition and on the absolute grounds was issued at the end. The problem with this order of procedures was that in many cases following the opposition, the applicants no longer paid the examination fee, thus the application was abandoned. However, the decision of the opposition commission had to be taken even if it consisted exclusively in noting that the opposition lacked the object as the application was abandoned. This was a waste of time for the examiners of ROPTO.
According to the new law, the application is first examined on absolute grounds, published if it fulfils the requirements, and the opposition proceeding takes place after publication. The same two-month term for filing the notice of opposition is maintained in the new law, as well as the same provisions on the merits of the case.
Cooling-off period for oppositions
A new term of two months is provided for the parties to reach an amicable settlement on the opposition proceedings. This term may be extended with a period mutually agreed between the opponent and applicant, but which cannot exceed three months.
Until the moment of this review, there is no sufficient data for concluding if this newly introduced cooling-off period will increase the number of cases when parties reach an amicable settlement. Traditionally, amicable settlements are rather rare in Romania.
No more possibility of appeal for the missed opposition terms
Under the old law, opponents who missed the term to lodge an opposition had the opportunity to file an appeal against the decision to grant the trademark.
The procedure of this appeal was fiercely challenged at the beginnings of the now old trademarks law, but finally was accepted by both ROPTO and the courts.
Under the new law, this is no longer possible. An appeal procedure exists but it applies only to challenging the decisions from the examination division or the opposition division.
Opponents who missed the term to lodge an opposition will have only the possibility to lodge cancellations.
Shortening the time to reach a decision
Under the new law, ROPTO is bound to issue a decision on the opposition proceedings within a two-month deadline, calculated from the expiry of all terms given to the parties to make submissions.
If applied correctly, this provision is expected to lead to shortening considerably the opposition procedure. Under the old law, in the majority of the cases, the decision was handed down after more than 12 after the expiry of all terms given to the parties to make submissions. However, given the fact that there are no sanctions for lack of compliance with this provision, it is unlikely that it will be implemented.
Changes related to the exhaustion and cancellation actions
The Harmonisation Directive provides for the obligation of the Member States to create administrative procedures for the cancellation and exhaustion of rights.
According to Article 45 of the Harmonisation Directive: 'Without prejudice to the right of the parties to appeal to the courts, Member States shall provide for an efficient and expeditious administrative procedure before their offices for the revocation or declaration of invalidity of a trademark.'
The Romanian trademark law uses other words for invalidity – namely, cancellation – and, respectively, for revocation – namely exhaustion of rights.
Under the old law, all cancellations and exhaustions of rights were exclusively judicial procedures ruled by the Municipal Court of Bucharest with the possibility to appeal to the Court of Appeal of Bucharest.
Cancellation claims took, on average, between one and two years in the first instance stage and about one year in the appeal stage with at least an approximately six-month break for the transfer of files between the court of first instance and the appellate court. This means that a typical cancellation claim with two stages could last, on average, between 2.5 and 3.5 years.
There is quite a lot of variation as to the costs for the cancellation claims because there are significant differences between the charges of various legal advisers. For example, Romanian companies do not have the obligation to hire a registered trademark attorney for the procedures before the Romanian Patent Office; consequently, the lawyer of the company is authorised to represent it in court. Of course, whether or not the lawyer is knowledgeable about trademarks law is a different issue. Foreign companies are obliged to hire a registered trademark attorney for the procedures before the Romanian Patent Office; however, the trademark attorney is not authorised to represent in court unless he or she is also a lawyer.
This explains why the fees charged for representation in court fluctuate so much from one case to another.
Regarding the exhaustion of rights cases, the procedure is the same. The difference is that, given that the burden of proof is on the trademark owner and not on the plaintiff, these cases usually are easier to handle than the cancellation claims; thus, their duration is typically shorter and their costs are lower than in the case of cancellation claims. If the plaintiff does not bring the proof that the mark was used or there were good reasons for not using it, the trial ends in favour of the plaintiff.
The new law provides for an alternative administrative procedure in front of the Romanian Patent Office as of 14 January 2023, in line with the provisions of Article 54 of the Harmonisation Directive. Judicial procedure remains possible beyond 14 January 2023; thus, the plaintiff will have the choice of how to proceed.
An important issue that was not clarified by the new law is the case of the marks that are registered but the owner has abandoned them and has changed name or address and can no longer be contacted. This issue is particularly difficult if the proprietors of the marks are from foreign countries because there is no possibility to get in touch with them in the case, for example, of an exhaustion of rights claim for non-use of the mark. According to the Romanian Code of Civil Procedures, if the defendant is located in another country and has no known appointed representative in Romania, the claim must be translated in the language of the defendant and sent by registered mail by the court clerk to the address provided by the plaintiff. If the mail is returned to the sender (the court clerk) then the general procedures of the civil code must be followed, which leads to unnecessary delays until the exhaustion is ruled.
Under the old law, cancellation on absolute and relative grounds was possible only in the first five years from the registration of the trademark, whereas cancellation for registration in bad faith was possible anytime during the validity of the mark.
Under the new law, the cancellation on absolute and relative grounds of refusal can be filed anytime during the protection period of the trademark, which is clearly in the advantage of the plaintiff.
The decisions of the examining division as well as the decisions of the oppositions commission can be appealed to the Board of Appeal of ROPTO within 30 days from the communication of the decision to be appealled. The modified law provides for the obligation that the Board of Appeal of ROPTO motivates the decision no later than three months from the date of ruling it. In the past, it took up to two years in some cases from the moment the decision was taken until it was written and handed to the parties.
The decisions of the Board of Appeal of ROPTO can be further appealed to the Municipal Court of Bucharest within 30 days from the communication of the decision to be appealled.
The decisions of the Municipal Court of Bucharest can be further appealed to the Court of Appeal of Bucharest.
The decisions of the Court of Appeal may only in exceptional circumstances be further appealed to the High Court of Cassation and Justice.
Romania has a civil law system, characterised by legislative Acts as the primary source of law. The court system is inquisitorial and unbound by precedent. There are no jury trials.
Intellectual property cases fall under the civil field of law. Civil courts are: trial courts; tribunals; courts of appeal; and the High Court of Cassation and Justice. The law provides how jurisdiction is distributed between trial courts and tribunals, both of them acting as courts of first instance. The basic rule is that infringement lawsuits must be brought in the court having jurisdiction over either where the defendant is domiciled or where the infringement occurred.
Cancellations and exhaustion of rights lawsuits, as well as all lawsuits related to a European Union trademark, must take place only before the Municipal Court of Bucharest, with the appeals taking place before the Bucharest Court of Appeal.
Second appeals can be filed only in exceptional situations; they are ruled by the High Court of Cassation and Justice.
This means that, if a national trademark is infringed in a county from the northern part of Romania, for example, but the infringer is domiciled in a county from the southern part, the infringement lawsuit can be lodged either in the northern county or in the southern county. However, if a European trademark is infringed, the infringement lawsuit must be lodged before the Municipal Court of Bucharest.
Both the Municipal Court of Bucharest and the Bucharest Court of Appeal have specialised sections hearing intellectual property cases. The other courts of the country do not have specialised sections. Therefore, whenever possible, the plaintiffs prefer to lodge the infringement lawsuits with the Municipal Court of Bucharest.
There are two types of proceedings, civil and penal (or criminal), but it is possible to start with the civil proceedings and to lodge penal proceedings at a later date. In this case, the decision in the civil claim is ruled only after a final decision in the penal proceedings. It is equally possible to start with penal proceedings and lodge civil proceedings at a later date.
Civil proceedings allow both parties, claimant and defendant, to have access to the entire court file. In penal proceedings, the parties do not have any access to the file during the investigation carried out by the police.
Civil proceedings are of two types: summary proceedings (alternatively called interim injunctions) and main infringement proceedings. Interim injunctions must be accompanied by main infringement proceedings.
In all court proceedings, the plaintiff has the obligation to prove the interest to sue.
There are four conditions that define the interest, to be fulfilled simultaneously. The interest must be (1) determined, (2) legitimate, (3) personal and (4) concrete and actual. There is an exception to the condition of 'concrete and actual'; namely, initiating court proceeding with the purpose of preventing the infringement of a threatened right or to avoid the producing of an imminent and irreparable harm. This exception is the basis for the interim injunction.
ii Pre-action conduct
Warning letters are commonplace in Romania.
It may be advisable to send out such letter prior to court action when the following conditions are met cumulatively:
- the value of the infringing goods is not too high, depending on the market of original goods;
- the infringer is carrying out the infringing activity for the first time and there is a belief that they can stop the infringement as a result of the letter; and
- there is no urgency.
Where the value of the infringing goods is high and the matter is urgent, it is advisable to avoid losing the time with the warning letter and ask for an interim injunction (see Section V.iv).
The claims typically pursued in a warning letter refer to the cease of the infringement. The letter may be accompanied by an undertaking to be signed by the infringer that can include a calendar of withdrawing the goods from the market and a contractual penalty clause. In the absence of the undertaking, the formal response of the infringer has the same value.
In respect of existing infringing goods on the market, the proprietor can insist that they should be withdrawn or allow the goods to remain on the market until they are used up.
Unfounded warning letters followed by court claims may, in principle, be attacked by the recipient as an abuse of rights. The penalty is established by the judge. However, such lawsuits are not commonplace in Romania.
iii Causes of action
The most frequently encountered causes of action for trademark-related matters are as follows:
- infringement of the trademark rights with or without claiming damages;
- cancellation of the trademark; and
- exhaustion of rights of the proprietor for non-use of the trademark.
Infringement of trademark rights may be coupled with a claim for unfair competition such as the use without the consent of the owner of a sign that is similar to a registered trademark or the use of a packaging similar to the one used by a company.
Conflicts between trademarks and company names are not frequent. They are possible, especially when the company name is considered to be:
another sign used in the course of trade were acquired prior to the date of application for registration of the subsequent trademark, or the date of the priority claimed for the application for registration of the subsequent trademark, and that non-registered trademark or other sign confers on its proprietor the right to prohibit the use of a subsequent trademark (Article 5.4.a) of the Harmonization Directive).
The difficulty resides in proving the conflict between the use of a company name and the use of a trademark as, in practice, they are used in different ways.
iv Conduct of proceedings
When deciding on a claim for an interim injunction, the judge will examine if all the following three conditions are met simultaneously:
- there is an appearance of right in favour of the claimant (prima facie right);
- the matter is urgent; and
- if, in the absence of granting the injunction, a right would be prejudiced or imminent and irreparable harm would be produced.
In respect to the urgency, there is no specific requirement for defining any time period. As an example, six to eight weeks may, in principle, be accepted as being within the 'urgency' non-written norm, especially when the claimant is a foreign juridical person.
In respect to the irreparable harm, the claimant has to offer evidence that either the infringement has already taken place or it is imminent.
The injunction may be granted without the summoning of the parties at the request of the claimant – ex parte injunctions. In practice, judges avoid, whenever possible, granting injunctions without summoning the parties. Urgency and the magnitude of irreparable harm are the elements that help the judges assess whether to summon parties or not.
If granted, the interim injunction remains in force during the main infringement proceedings. If no main infringement proceeding is started within a certain term from the date of granting the injunction, it remains without effect.
In trademark matters, the typical interim injunction claim is for the infringement of a trademark right or a geographical indication.
The court gives an executory judgment. The defendant has the possibility to appeal against the injunction, and also can request to suspend the execution of the decision pending the appeal. The Court of Appeal shall decide on the amount of the bail to be paid by the defendant to have the request for suspension granted.
The decision in the interim injunction case is not binding on the substantive trial (does not have the value of res judicata); however, a judgment given in a main proceeding case is binding in respect to a later interim injunction case.
In some cases, if the measures requested by the claimant (the owner of the trademark right) are likely to produce a prejudice to the adverse party, the court can oblige the claimant to pay a financial guarantee, establishing its amount.
If a request for an interim injunction was lodged before lodging the claim on the merits of the case, in the decision ruling on the interim injunction, the court must establish a deadline for the claimant to file the request for permanent injunction in the main infringement proceedings. Where the claimant does not comply with this obligation, all provisional measures ordered by the court in an interim injunction file cease, provided that a term of 30 days maximum elapsed since the date of the court decision taking the measures.
Main infringement proceedings
There is a possibility, under certain conditions, to transform the claim for summary proceedings in a claim for permanent injunction.
The structure of the permanent injunction claim lodged by the plaintiff, proprietor of the trademark right, includes specific requests (also called sub claims), corresponding to the rights of the proprietor, the first request being always the request to permanently cease the non-authorised use of the trademark.
The following means of evidence are allowed: documents (all in Romanian language); cross evidence (interrogatory); expert opinions; and witness declarations.
Means of evidence are usually documents – such as invoices, purchase orders, offers for sale, pictures, catalogues and similar printed materials, including media surveys (e.g., for determining the reputation of a trademark). Printed information from the internet or email correspondence is, in principle, admissible, provided that it is dated.
Cross evidence (interrogatory) can be allowed by the judge. Failure to respond to the interrogatory could be taken as a full confession or as positive evidence for the benefit of the party who requested this means of evidence.
Expert reports can be for accounts matters, for determining the amount of the damages claimed or for technical matters for assessing the infringement. The matter of assessing infringement of trademark is quite straightforward for the judge and does not require any technical background; however, in more complex cases, the judges can order technical expert reports.
The first typical remedy is to stop the infringing acts until the decision in the main infringement proceedings and the second would be to seize the infringing goods.
General exceptions as to remedies to be pursued in summary proceedings are:
- measures that can be ordered in the main infringement lawsuit, principally permanent cease of infringement of a mark, damages; and
- measures that, if enforced, make impossible the reinstatement of the initial situation, such as, for example, the destruction of the goods.
Main infringement proceedings (permanent injunction)
Typical remedies are the permanent interdiction to use the trademark and the destruction of the infringing goods.
There are two categories of monetary remedies: damages and reimbursement of trial costs. Damages usually are calculated as the lost profit of the plaintiff; in some cases, an accounts expert report is ordered by the judge for the calculation of the damages. To claim damages, the claimant must pay a stamp fee whose value is roughly 1 per cent of the value claimed. Reimbursement of trial costs usually refers to the charges of the lawyers or attorneys. In this respect, the claimant must bring to the closing debates the invoices of the lawyers or attorneys as well as the proof that the invoices were paid. Judges are usually willing to decide to reimburse the trial costs, partially or entirely.
Other enforcement proceedings
In many cases, the trademark infringement case starts as a consequence of an application for customs intervention, according to the EU Custom Regulation No. 608/2013 or its national counterpart; namely, Law No. 344 of 29 November 2005 regarding measures for ensuring the enforcement of intellectual property rights through custom procedures. In such cases, the goods are seized by the customs authorities until the end of the court proceedings.
Customs authorities may act in all situations where goods suspected of infringing an intellectual property right are or should have been subject to customs supervision or customs control.
Usually, customs officers check all types of products, either in transit or not, and take the appropriate measures, irrespective of whether trademarks or other types of intellectual property rights are concerned. However, the majority of cases refer to trademarks.
Where the rights holder confirms that the goods are counterfeit, and the declarant or holder of the goods files an opposition, to prevent the release of the goods, the rights holder must file a civil claim for infringement against the declarant or holder of the goods or a penal claim for a counterfeit offence and send to the customs authorities the proof that a civil or penal claim was lodged. Civil actions are basically infringement lawsuits submitted to a court of law. Infringement lawsuits end with a decision confirming whether one or more intellectual property rights were infringed. If infringement was found, the decision usually states that the infringing goods must be destroyed.
Penal actions start with penal investigation by the police, with the aim of checking if the action of the counterfeiter falls within the definition of a criminal offence defined as 'the act that represents a social danger, being carried out with guilt and is defined as such by specific laws.' Counterfeit of a trademark or of a design is defined as a criminal offence, both by the national trademark law and, respectively, by the unfair competition law. Once the investigation has been carried out, the police send the file to the prosecutor. If the prosecutor considers the action to be a criminal offence, the case is sent to the court, to the criminal section.
The new trademark law brings numerous important changes, both procedurally and on substantive matters. The professionals wait eagerly for the implementing regulations (not issued until the date of this review), hoping that a large number of issues will be clarified.
1 Raluca Vasilescu is a patent and trademark attorney and a partner at Cabinet M Oproiu.