Introduction
Trademark filing procedure
Opposition procedure
Amended deadlines
Requirements for documents
Comment
In July 2020, amendments to the Trademarks Law(1) entered into force in Romania. The new law transposed the provisions of the EU Trademarks Directive,(2) introducing important changes to trademark-related procedures in Romania.
Although the provisions of the new Trademarks Law have been applicable since July 2020, the adoption of the amendments to the Implementing Regulation took a long time. The amended Implementing Regulation recently entered into force on 17 October 2022.
The amended Implementing Regulation clarifies and details certain new procedural aspects provided for by the Trademarks Law and stipulates new deadlines in trademark procedures.
This article sets out the most important changes brought by the new Implementing Regulation, which affect the practice before the Romanian Trademarks Office.
The Trademarks Law, as republished, eliminated the requirement to provide a graphical representation when applying for trademark protection for signs. The new Implementing Regulation stipulates that applied-for trademarks may be represented in any appropriate form, using generally available technology, which:
- allows the trademark to be reproduced in the Trademark Register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner; and
- enables the competent authorities and the public to determine the clear and precise subject matter of the protection granted to the trademark holder.
Moreover, the new Implementing Regulation clarifies the requirements to be fulfilled by applicants in relation to the representation of the sign, depending on its type (eg, sound mark, multimedia mark or motion mark).
Another important change allows applicants, at the time of filing, to submit a declaration, along with evidence, attesting to the fact that the applied-for sign has acquired a distinctive character through use. Although in practice this option was already used by applicants, there have been instances in which the filed statements and supporting documents were not considered by examiners as the practice was not specifically regulated. In such cases, a new and separate submission was required, in response to a refusal notice. It is expected that this change will shorten the registration procedure for signs that would be objectionable in line with the absolute grounds for refusal (eg, lacking a distinctive character or being customary in the course of trade) where such grounds can be overcome by the signs having acquired the required distinctive character through use.
Nevertheless, if applicants decide not to take this route from the beginning of the application process, they can still submit evidence of the mark's distinctive character acquired through use in response to provisional refusal notices on absolute grounds. The term for responding to the refusal notice in such cases is 30 days from its communication date, which may be extended, at the request of the applicant and upon the payment of a corresponding official fee, by an additional 30 days.
The Implementing Regulation no longer mentions facsimile as a modality for filing trademark applications. Applications may still be filed in paper format, directly before the authority's registry, by post, courier or email, as well as by means of e-filing online, using the form made available on the authority's official website.
The amendments to the Trademarks Law introduced as part of the opposition procedure an initial two-month term (known as the "cooling off" term), allowing the parties to negotiate a potential amicable settlement to the conflict. According to the Trademarks Law, this term may be extended by an additional three months, at the joint request of the parties. In practice, since the entry into force of the amended Trademarks Law, the authority has issued notifications in this regard, informing the parties of the commencement of the cooling off stage of the procedure. However, the authority has failed to indicate the date on which the initial two-month term for negotiations actually ends.
In practice, this lack of transparency in the official communications has created uncertainty for the parties to the opposition, especially when such notifications were not communicated to both parties on the same day. Fortunately, the amendments to the Implementing Regulation resolve this issue: it is expressly stipulated that the end date of the initial two-month period for the amicable settlement of the opposition will be expressly indicated in the authority's notification communicated to the parties. To date, this change has not yet been seen in the authority's practice.
Another important change relates to the introduction of an additional step in the adversarial stage of the opposition procedure. The amended Implementing Regulation stipulates that the applicant's arguments in response to the opposition are also communicated to the opponent, which may file additional observations in relation thereto within 30 days of the date of communication.
Procedural deadlines are in general substantially shortened by the new Implementing Regulation, aligning with the deadlines provided for by the Trademarks Law, which are aimed at speedier procedures before the authority. For detailed information relating to the stages of a trademarks' registration procedure in Romania and the applicable terms, see "Introduction to trademark registration procedure in Romania".
The new Implementing Regulation no longer requires original or notarised or legalised documents for the purposes of recording licences and changes of ownership (eg, assignments, mergers, changes of ownership through succession, court decisions or any other transfer of ownership provided by the law). Currently, true copies of the supporting documents filed for these purposes (certified for accuracy with the originals by the lawyer or trademark attorney) are sufficient under the new provisions.
Furthermore, the submission of simple copies of powers of attorney before the authority is sufficient, provided that they comply with the other legal requirements. The new Implementing Regulation does not stipulate that original copies of the powers of attorney must be filed. This aligns with the recent practice of the authority to accept documents and applications simply or electronically signed, respectively submitted by electronic means.
The term for filing the signed power of attorney before the authority has been extended from 30 days, as previously provided for, to a longer term of two months. If a valid power of attorney is not filed before the authority within this period, the proceedings continue with the applicant or trademark holder. Any procedural acts that were carried out by the (not appointed) representative will not be taken into consideration unless they are expressly confirmed by the represented party within 10 days from receipt of the authority's notification to this effect.
Furthermore, from now on, the power of attorney must also expressly include its duration, in addition to the name and signature of the entity granting the powers, the object and the signing date as previously required.
The adoption of the long-awaited amendments to the Implementing Regulation is welcome. It contains important clarifications in relation to practical procedural aspects before the Romanian authority and is aimed at ensuring speedier and more transparent procedures and communications. It also allows more flexibility for the authority in accepting certain types of documents and, overall, it is expected to contribute to a clearer and more consistent practice for all parties involved in Romania's trademark system. It is hoped that that new provisions will be implemented swiftly and in a uniform manner throughout the authority's trademark practice.
For further information on this topic please contact Zsófia Judit Halmágyi or Andreea Bende at Simion & Baciu by telephone (+40 31 419 04 88) or email ([email protected] or [email protected]). The Simion & Baciu website can be accessed at simionbaciu.ro.
Endnotes
(1) Law No. 84/1998 on trademarks and geographical indications.
