Opposition processes to pending trademark applications can be filed in Romania within two months of the application’s second publication in the Official Bulletin. As a result, after the authority has completed its ex officio absolute grounds examination, interested parties might object to the judgments by which the applications were accepted.
Article 6 of Romanian Law No. 84/1998, reprinted, on trademarks and geographic indications specifies the relative grounds for refusal that can be used in opposition proceedings (as well as in cancellation proceedings on relative grounds) (the Romanian Trademarks Law).
The relative grounds for refusal that can currently be invoked in Romania pursuant to the provisions of article 6 of the Romanian Trademarks Law follow those applicable at the EU level before the EU Intellectual Property Office, which was transposed from the EU Trademarks Directive into national law in July 2020.
The Romanian Trademarks Law has recently been amended
The amendment of article 6(3) of the Trademarks Law, which was implemented with the transfer of the EU Trademarks Directive in terms of the relative grounds for refusal of a trademark application or cancellation of a subsequently registered mark, is a good chance. When conflicting trademarks pertain to identical or comparable items or services, the amendment stated that earlier rights derived from the registration of an earlier reputed brand in Romania or the European Union can also be invoked. Such prohibitions were only applied under the previous law to marks that denoted separate goods or services, which made it impossible to depend on in practice.
Another amendment to the relative grounds for rejection now provided by the Romanian Trademarks Law is the removal of the requirement of demonstrating the earlier mark’s usage from outside Romania when claiming the applicant’s ill faith in pursuing the opposed application. Only the restriction that the subsequent mark not be mistaken with a prior trademark that was protected abroad is stipulated in the laws adopted in July 2020 and now in force.
Thereby, in addition to the “classic” or “most commonly encountered” relative grounds relied upon in opposition revocation processes – relating to sign identity or similarity, the likelihood of confusion, the reputation of the earlier Romanian or EU trademark, and unfair advantages and detriment to the distinctive character or reputation of such earlier mark – the following can be relied upon as relative grounds for refusal under the Romanian Trademarks Law:
- the rights derived from an application for registration of a designation of origin or a geographical indication filed in accordance with national or EU law prior to the filing date of the disputed trademark (or its priority date, as applicable), when the respective designation of origin or geographical indication confers on the person authorized to use it the right to prevent the use of a subsequent mark in Romania. Of course, this is contingent on the designation of origin/geographical indication being registered at some point.
- the rights over a sign that existed prior to the filing date of the contested application (or, if applicable, its priority date) if that sign entitles its proprietor to prohibit the use of a trademark that was subsequently filed in Romania;
- if the trademark’s registration is requested by the agent or the representative of the trademark owner, in their own name and without the consent of the trademark owner, unless the agent or the owner’s representative justifies their approach;
- a previous right – in particular, a right to a name, an image, copyright, or an IP right;
- if the mark can be confused with an earlier mark protected abroad, provided that the applicant acted in bad faith at the filing date of the contested application.
In terms of procedure, the opposition procedure can be started before the authority by drafting and filing an opposition notice within two months after the trademark granting decision’s publication date (ie, its second publication date). The opposition notification must include the relevant reasons relied on, as well as the prior rights invoked and a brief explanation of the case, as well as proof of payment of the authority’s official costs.
The authority then communicates the objection notice to the applicant, informing them that the procedure allows for a two-month initial period for the parties to discuss an amicable resolution of the situation. A comparable notice should be sent to the opponent, with the goal of informing both parties of the date on which the “cooling-off period” for settlement talks expires. In fact, however, the opponent does not always get such information, and because the exact date when the “cooling-off” period begins is not indicated in the notification, each party estimates the end of the two-month period based on the date on which the notice was received.
At the request of both parties, the “cooling-off” period may be prolonged for a period of up to three months.
The adversarial section of the procedure begins when the “cooling-off” stage is completed. The authority issues a written notice to the opponent, inviting it to file the arguments and evidence it plans to rely on in support of the objection within 30 days.
The opponent is notified in this regard by the authority and requested to complete evidence for the Romanian or EU territory within two months of the authority’s official notice if the applicant exercises its right to request evidence of use for the earlier marks relied upon in the opposition. If the opponent fails to file the requisite evidence of usage, the opposition is automatically rejected by law, with no further investigation by the authority.
After the adversarial phase of the procedure is concluded, the examiners must decide on the opposition within two months and inform the parties of their decision within 30 days. Due to the backlog of ongoing cases before the examiners, these terms are frequently extended in practice.
Decisions issued in opposition processes can be appealed to the Romanian authority’s Appeals Committee within 30 days of their transmission date.
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