Law no. 112/2020 (“Law no. 112/2020”) which amends and supplements Law no. 84/1998 on trademarks and geographical indications entered into force on 13 July 2020.
We have set out below the essential amendments brought in by the new provisions.
Law no. 112/2020 is designed to align the national provisions on trademarks and geographical indications with European legislation, as well as with the jurisprudential tendencies of the European Union Court of Justice.
Law no. 112/2020 introduces shorter deadlines for trademark registrations, examinations, appeals and even priority claiming. At the same time, new deadlines regarding the opposition procedure are also introduced which are designed to ensure its coherence and speed.
The new provisions also amend the trademark definition by establishing the possibility of qualifying as a trademark a sign that can be represented in the Trademark Register in a way that allows relevant authorities and the public to clearly and precisely identify the object of the trademark protection – thereby eliminating the requirement for a graphic representation of the sign.
Consequently, on the one hand, the need to clearly identify the object of protection is emphasised by requiring the sign to be represented in the Trademark Register whilst, on the other hand, also offering the possibility for registration of new categories of trademarks (e.g. sound, holograms, multimedia trademarks).
This amendment to the definition of a trademark will almost certainly lead to an increasing number of sound and/or multimedia trademark registration applications.
The new provisions also extend and clarify the absolute grounds for refusal by expressly establishing the possibility of invoking earlier rights deriving from: (i) protected designations of origin and geographical indications in accordance with EU legislation, national legislation and international agreements to which the EU, or Romania, is party; (ii) traditional terms for wines, provided for by EU legislation or international agreements to which the EU is party; (iii) traditional specialties guaranteed by virtue of EU legislation or by international agreements to which the EU is party; and (iv) plant varieties, registered in accordance with EU legislation, national legislation or international agreements to which the EU, or Romania, is party.
At the same time, compared to the previous regulation, where the criteria for absolute grounds for refusal of trademarks that could be considered likely to mislead the public, were exhaustively listed, the new amendment establishes these criteria by way of example only.
One of the main changes under Law 112/2020 is the introduction of the definition regarding the International Classification of Goods and Services for the Purposes of the Registration of Trademarks under the Nice Agreement. In this regard, it is worth mentioning the introduction of the possibility of a declaration by the owner of a trademark, registered with the entire title of a class, of the real intention at the date of filing the application. If the intention was to request the protection of goods and services other than those covered by the literal meaning of the title of that class, the applicant may declare such until 30 September 2020, provided that these goods and services are included in the list of Nice Classifications in force at the time of filing the application for registration of the trademark in question.
Regarding trademark renewal, according to the new provisions, it can be done at least 6 months before the expiration date of the registration; the State Office for Inventions and Trademarks (“OSIM“) having informed the owner of the expiration of the registration at least 6 months before the expiration date.
With respect to the transfer of rights over the trademark, new ways are recognised such as by virtue of a merger, as a result of a court decision or by any other way provided for by law regarding the transfer of property rights.
In terms of the revocation procedure, Law 112/2020 establishes that the period of 5 years for the effective use of the trademark is calculated from the date of completion of the registration procedure, unlike the previous regulation where the period of 5 years ran from the date of registration in the Trademark Register.
With respect to the cancellation procedure, Law 112/2020 eliminates the 5 year period for the introduction of the cancellation application. According to the previous regulation, only cancellation actions based on bad faith could be filed at any time during the protection period, while the new provisions introduce the possibility to instigate a cancellation action at any time regardless of the invoked grounds for cancellation.
At the same time, from a procedural point of view, the applicant in the cancellation or revocation procedure has the ability to file an application either before the Bucharest Tribunal or administratively at OSIM.
The new time periods applicable before OSIM by virtue of Law 112/2020 are as follows:
- the trademark registration fee payment period is reduced from 3 months to 30 days;
- the period for submitting the priority documents is reduced from 3 months to 30 days;
- the period in which OSIM must examine the fulfillment of conditions for assigning the filing date of the trademark registration application is reduced from one month to 7 days;
- a period of 2 months is introduced, from the date of communication of opposition, for the parties to discuss an amicable opposition settle. This procedure is similar to that made available for opposition proceedings before the European Union Intellectual Property Office (“EUIPO”) and is essentially the “cooling-off” period;
- the introduction of some mandatory periods for OSIM regarding the issuing of a decision in the opposition procedure: a maximum of 2 months from the expiration of the periods provided for the parties within the procedure and 30 days for the communication of the decision; and
- the introduction of a payment obligation, on the applicant, of the legal fee for the issuing of the registration certificate within 30 days of the date of notification of the decision of the registration procedure. It is important to mention that, in the absence of the legal fee being paid within the period provided for by law, it will be considered that the applicant has abandoned the trademark registration.
Regarding entry into force of Law 112/2020, it is important to note that filed applications for registration of trademarks and geographical indications and also the ones in the examination procedures will follow the procedures provided for by the law in force at the date of their submission before OSIM.
From an administrative point of view, we note that OSIM provides an increased level of support for applicants with updated forms related to the offline procedures before it, these being:
- The trademark registration application form;
- The trademark renewal application form; and
- The registration/renewal application form regarding a geographical indication.
For more details, please contact:
Ana Maria Kusak
Partner
Phone: +40 21 316 87 49
E-mail: AKusak@saa.ro
Elena Stan
Senior Associate
Phone: +40 21 316 87 49
E-mail: EStan@saa.ro
or
Madalina Spataru
Associate
Phone: +40 21 316 87 49
E-mail: MSpataru@saa.ro
