Romania: understanding cancellations at the OSIM

In summary

Romania has a first-to-file trademark system that presents many similarities with the European Trademark system when it comes to both procedural and substantive aspects. A novel element since 2023 is that cancellations (invalidations) and exhaustion of rights can be heard by the Patent Office in administrative proceedings as an alternative of court proceedings.

Discussion points

• Legal framework
• Filing and prosecution
• Contentious matters
• Enforcement
• Changes of ownership

Referenced in this article

Institutions and legal texts:

• OSIM – acronym in Romanian for Romanian Patent and Trademark Office
• Municipal Court of Bucharest
• Romanian trademarks Law No. 84/1998
• Court of Appeal of Bucharest
• High Court of Cassation and Justice
• 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)
• Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark
• Paris Convention for the Protection of Industrial Property
• Madrid Agreement Concerning the International Registration of Marks
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
• TRIPS Agreement
• EU Custom Regulation No. 608/2013 and its national counterpart; namely, Law No. 344 of 29 November 2005

Five key need-to-knows

1. Romania has a first-to-file trademark system.
2. OSIM carries out only examination on absolute grounds (inherent registrability).
3. Conflict with prior rights is solved via opposition procedures; the opposition term is two months after the publication of the trademark application.
4. Trademarks must be used within at least five years from the total validity term. Failure to comply with this requirement results in having the trademark vulnerable for invalidation.
5. Since 2023, OSIM acts as court of first instance for trademark invalidations; however, infringement is only of the competence of the courts of law.

Legal framework

There are three types of trademarks valid in Romania: national trademarks, international trademarks (Madrid Agreement) and EU trademarks, as Romania is part of the European Union.

Romanian Trademarks Law No. 84/1998 was last amended in 2022 for the purpose of transposing 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.

The implementing Regulations of the Law have not been updated at the date of writing this article.

Romania is part of the following international treaties applicable in the field of trademarks:

• Paris Convention for the Protection of Industrial Property;
• Madrid Agreement Concerning the International Registration of Marks;
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
• TRIPS Agreement.

The relevant competent authorities for trademark matters are OSIM as the administrative body and judicial body and the Municipal Court of Bucharest as the judicial body together with the Court of Appeal of Bucharest. For enforcement, customs authorities and the police are also involved.

Filing and prosecution

Under the provisions of the Romanian Trademarks Law No. 84/1998, the following type of marks are protected:

• registered trademarks (including collective or certification marks);
• unregistered and well-known marks;
• company names;
• trade names and business names;
• geographical indications; and
• domain names.

The trademark applications are examined by OSIM for inherent registrability.

The Romanian Trademarks Law No. 84/1998 respects, in general, the provisions of articles 4.1 and 4.3 of the Harmonisation Directive. The possibility that the mark has acquired a distinctive character before the date of submitting the request for cancellation is mentioned for the first time in the Romanian Trademarks Law No. 84/1998 as amended in 2022.

Contentious matters heard by OSIM

There are two types of contentious proceedings heard by the Romanian Patent Office: opposition on one hand; cancellation (invalidation) and exhaustion of rights on the other hand.

Opposition

The application is first examined on absolute grounds and published if it fulfils the requirements, with the opposition proceeding taking place after publication.

The opposition term is two months; however, it is possible to submit the detailed arguments at a later date.

A 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.

To date, there is no sufficient data for concluding if this newly introduced cooling-off period has increased the number of cases when parties reach an amicable settlement. Traditionally, amicable settlements are rather rare in Romania.

Decisions of the examining division as well as decisions of the oppositions commission can be appealed to the Board of Appeal of OSIM within 30 days from the communication of the decision to be appealed. The Board of Appeal should motivate 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. In practice, some decisions (especially ones from old files) continued to be issued later than the timescale provided by the new law.

Decisions of the Board of Appeal of OSIM can be further appealed to the Municipal Court of Bucharest within 30 days from the communication of the decision to be appealed.

Decisions of the Municipal Court of Bucharest can be further appealed to the Court of Appeal of Bucharest.

Decisions of the Court of Appeal may only in exceptional circumstances be further appealed to the High Court of Cassation and Justice.

Opponents who missed the term to lodge an opposition will have only the possibility to lodge cancellations (invalidations).

Types of grounds of opposition on the merits of the case

Among other things, the registration of a junior application may be refused by the Commission of the Opposition of OSIM on relative grounds if the junior application:

• is identical to an earlier trademark for identical goods or services;
• is identical or similar to an earlier trademark for identical or similar goods or services, where there is a likelihood of confusion, including the likelihood of association with the earlier trademark; or
• is identical or similar to an earlier Romanian or EU trademark for goods or services that are identical, similar or not similar to those in relation to which the earlier trademark is registered, where the earlier trademark enjoys a reputation in Romania or in the European Union and the use of the subsequent trademark would generate an unjustified profit deriving from either the distinctive character or reputation of the earlier trademark.

Cancellation (invalidation) and exhaustion of rights

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.

Since 2023, OSIM functions as a first instance court for cancellations and exhaustions of rights.

Such administrative proceedings are alternative to the filing of claims directly with the competent court. The decision of OSIM rendered in cancellation and exhaustion proceedings can be appealed within 30 days of the communication before the Municipal Court of Bucharest. The decision of the Municipal Court of Bucharest is only subject to appeal before the Bucharest Court of Appeals.

Enforcement of trademark rights – court matters

General aspects

Romania has a civil law system, in which the legislative acts are 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. The civil courts consist of trial courts, tribunals, courts of appeal and the High Court of Cassation and Justice. The law provides for how jurisdiction is distributed between trial courts and tribunals, both 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 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.

There are two types of proceedings – civil and penal (or criminal) – but it is possible to start with 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.

There are two types of civil proceedings: summary proceedings (alternatively called interim injunctions) and main infringement proceedings. Interim injunctions must be accompanied by main infringement proceedings.

Causes of action

Infringement of trademark rights may be coupled with a claim for unfair competition such as use without the consent of the owner of a sign that is similar to a registered trademark or the use of packaging similar to that used by a company.

Conflicts between trademarks and company names are not frequent; however, 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.

Summary 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.

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.

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 can also 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 (it does not have the value of res judicata); however, a judgment given in a main proceeding case is binding in respect of a later interim injunction case.

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 maximum term of 30 days has elapsed since the date of the court decision taking the measures.

Permanent infringement proceedings

The structure of the permanent injunction claim lodged by the plaintiff, as proprietor of the trademark right, includes specific requests (also called sub claims) corresponding to the rights of the proprietor – the first request always being the request to permanently cease the non-authorised use of the trademark and other requests refer to monetary remedies or to have the final decision published.

The following means of evidence are allowed: documents (all in the Romanian language or accompanied by their translation into Romanian); 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 (eg, 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, judges can order technical expert reports.

Remedies – general aspects

The typical remedy in interim injunctions is to stop the infringing acts until the decision in the main infringement proceedings and the other 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 cessation 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.

Typical remedies in permanent interdiction proceedings are the permanent cease of unauthorised use of the trademark, the destruction of the infringing goods and the monetary remedies.

Monetary remedies

There are two categories of monetary remedies: damages and reimbursement of trial costs. Damages are usually 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.

For the time being, the specialised Board of OSIM do not rule in respect of the trial costs for the administrative cases of the cancellation and exhaustion claims.

In many cases, the trademark infringement case starts as a consequence of an application for customs intervention, according to 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.

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.

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.

Changes of ownership

The mark may be assigned in its entirety or only for some of the classes, products or services for which the mark is protected. The condition provided by the law for assignment is that identical or similar marks, belonging to the same owner and used for identical or similar goods or services are transmitted by assignment only in their entirety, and only to the same person, under the sanction of cancelling the assignment. The Romanian Trademarks Law also does not prohibit assigning the mark prior to the registration; namely, as a trademark application under examination procedure.

The request for recording the assignment of the mark should be accompanied by the original document attesting the transfer of the mark (recommended to be signed by the parties in front of the public notary since the public notary certifies the identity of the signatory parties and that the trademark and the wish of the parties really exist) or of an extract from said agreement.

The assignment of the mark is recorded with the OSIM and published in the Official Trademark Bulletin. The assignment is opposable to third parties only from the date of its publication in the Official Bulletin.

The assignment produces effects for the signatory parties starting with the date stipulated in the agreement signed by the parties. Thus, the recordal of the trademark assignment is not a condition for its validity but a condition for its opposability to third parties.