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17 May 2021
What statutes, regulations or case law govern trademarks in your jurisdiction?
In Romania, trademarks are governed by the following national laws and regulations and EU regulations and directives:
The following national laws also include provisions applicable to trademarks:
The Civil and Criminal Codes and the Civil and Criminal Procedural Codes comprise the applicable statutory laws and principles.
Are there restrictions on how trademarks may be enforced, licensed, or otherwise transferred?
In Romania, trademark rights may be assigned independently of the goodwill of the business concerned. Assignment agreements must be concluded in writing, except where the assignment results from a court order or the fulfilment of contractual obligations.
Assignments may be total (ie, referring to all of the goods or services for which the trademark is registered) or partial (ie, regarding only part of the goods or services covered by the trademark). However, assignments may not limit the use of the trademark for the goods or services concerned to a given part of the Romanian territory.
A transfer of the whole of the undertaking includes the transfer of the trademark rights except where an agreement to the contrary exists or circumstances clearly dictate otherwise.
Identical or similar trademarks which are registered by the same owner and which are used for identical or similar goods or services can be assigned only as a whole and to the same entity under the provision of nullity of the assignment agreement.
The State Office for Inventions and Trademarks (SOIT) may refuse the recordal of an assignment if it is evident that the public would be misled as to the nature, quality or geographical origin of the goods or services for which the assigned trademark is registered unless the assignee agrees to limit the assignment to the goods or services in relation to which the trademark is not misleading.
Recordal of assignments before the SOIT is not compulsory. However, third parties may oppose assignments after their publication in the Official Bulletin.
National trademarks may be licensed for all or only some of the goods or services for which they are registered and for the entire territory of Romania or only a part thereof. Licences may be perpetual or limited in time and exclusive or non-exclusive.
During the term of licence agreements, licensees must:
Licence agreements are recorded before the SOIT at the request of the trademark owner or the licensee. Although their recordal is not mandatory, third parties may oppose licence agreements from the date of their publication in the Official Bulletin.
In the absence of a stipulation to the contrary, non-exclusive licensees may not bring infringement proceedings against alleged infringers without the consent of the trademark owner.
However, the holder of an exclusive licence may initiate infringement lawsuits on its own, if the trademark owner – after being notified of the infringement – takes no action within the term requested by the licensee.
Licence holders may join trademark infringement proceedings initiated by trademark owners to claim damages.
Which authorities are responsible for granting, administering and enforcing trademarks in your jurisdiction?
Procedures before SOIT
Under the Trademarks Law, the SOIT is the sole authority that has the ability to grant protection for trademarks and geographical indications filed nationally in Romania. SOIT is responsible for various procedures, including:
SOIT decisions regarding trademarks (eg, regarding registrations, recordals, transfers of rights and renewals) may be appealed before the SOIT Appeals Committee, whose decisions can be contested before the Bucharest Tribunal within 30 days of their communication. Bucharest Tribunal decisions are subject to appeal before the Bucharest Court of Appeal.
Claims in connection with the revocation and cancellation of trademarks may be submitted only before the Bucharest Tribunal. However, as of 14 January 2023, SOIT will be able to examine trademark revocation and cancellation claims as well as the Bucharest Tribunal.
Infringement claims up to Lei200,000 (approximately €41,000) may be filed before a district court with the possibility of appeal before a tribunal and a second appeal before a court of appeal. Infringement claims of a higher value must be filed before a tribunal with the possibility of appeal before a court of appeal and a second appeal before the High Court of Cassation and Justice.
Under Romanian law, trademark infringement constitutes a criminal offence, punishable by between three months' and two years' imprisonment or a criminal fine. Criminal actions may be brought ex officio by criminal investigation bodies or at the request of the injured party.
In compliance with EU Regulation 608/2013/EU concerning customs enforcement of IP rights and the corresponding provisions of national law, Customs may seize any goods suspected of infringing IP rights and notify the rights holders. Where the rights holders are also holders of granted national or EU applications for action, the seizure may lead to the destruction of seized goods confirmed as counterfeits, provided that the other legal requirements are met.
What types of legal or administrative proceedings are available for enforcing trademarks in your jurisdiction?
In accordance with the provisions of the Trademarks Law, during a trademark's registration procedure, interested third parties may submit before the SOIT written observations which rely on the absolute grounds for refusal provided by law within two months from its first publication date. Oppositions based on the relative grounds for refusal provided by law may be filed within two months from the second publication of the trademark application in the Official Bulletin.
SOIT decisions regarding filed observations or oppositions may be appealed before the SOIT Appeals Committee within 30 days of their communication date, while SOIT Appeals Committee decisions may be contested before the Bucharest Tribunal. A further appeal against the decisions of the Bucharest Tribunal can be submitted to the Bucharest Appellate Court.
Infringement proceedings may be launched before the competent courts to prohibit unauthorised third-party use in the course of trade of:
Trademark infringement is considered a criminal offence under Romanian law, punishable by between three months' and two years' imprisonment or a criminal fine. Criminal action may be brought against infringers by criminal investigation bodies ex officio or at the request of the injured party. Depending on the offence, the reconciliation of the parties may remove criminal liability.
At any time during the term of protection of a registered trademark, any interested party may request its revocation or cancellation under the conditions stipulated in the Trademarks Law.
In infringement litigation, the defendant may counterclaim or initiate separate proceedings for the revocation or cancellation of the trademark invoked by means of the initial claim.
In accordance with EU Regulation 608/2013/EU concerning customs enforcement of IP rights and the corresponding provisions of national law, if an application for action is granted, the rights holder may request the destruction of any goods detained by Customs after confirming that their rights have been infringed unless the declarant or addressee of the detained goods raises an opposition to the seizure measure. In this case, legal proceedings must be initiated to confirm the infringing acts in order for the detention and destruction of the goods to proceed.
What remedies are available in your jurisdiction to a party whose trademarks have been infringed?
The court may order provisional measures at the request of a trademark owner or any other party which exercises trademark rights with the owner's consent if such owner or party provides credible proof that the rights are subject to a current or imminent unlawful act likely to cause irreparable harm or harm that is difficult to repair.
By granting a preliminary injunction claim, the court may order, in particular:
For the injunction claim to succeed, the following conditions must be met:
Further, the court must be able to rule on the injunction without reviewing the merits of the case.
As well as the above, the infringer may be ordered to pay damages according to the provisions in the general law. In IP infringement cases, damages are calculated according to the methods provided for in the Government Emergency Ordinance on the Protection of Industrial Property Rights.
Does your jurisdiction participate in any trademark protection treaties or other similar agreements?
Romania is a party to the following major international treaties and agreements relating to trademarks:
What are the major trademark developments currently unfolding in your jurisdiction?
On 13 July 2020 amendments to the Trademarks Law took effect, transposing the provisions of the EU Trademarks Directive.
The new law introduced important changes to the Romanian trademarks system to align it with the EU Directive – namely:
Further, in response to the need for a more straightforward approach to communication and as a consequence of the COVID-19 pandemic, the SOIT has considerably liberalised its approach on the formalities that users of the IP system must perform. In 2020, following the introduction of the online trademark filing system a few years ago, the SOIT launched other online options for trademark portfolio management, including e-renewal and the possibility of filing various recordals online (ie, change of name or address, transfer of rights and introducing new empowered attorneys). From 2020 the SOIT also accepts electronic signatures on documents and forms filed online and has made available two dedicated email addresses to which users can send documents or requests online.
What are your hopes and expectations for the trademark landscape in your jurisdiction in the coming years?
It is hoped that the changes introduced to the trademarks system and the participation of Romania's IP office in the EU Intellectual Property Office convergence programs will facilitate a better harmonisation of Romania's legal provisions and the procedures applied by the IP office in connection with the registration and protection of trademarks. Along with the trends of increased digitalisation and the use of the Internet of Things, this should contribute to reshaping the scenery of the Romanian trademark landscape. Currently, most trademark applications represent conventional signs filed for conventional goods or services. It is hoped that there will be an increase in the volume of non-traditional trademarks being protected in Romania and the protection and use of signs relating to the digital world.
For further information on this topic please contact Andreea Bende or Zsófia Judit Halmágyi at Simion & Baciu by telephone (+40 31 419 04 88) or email (firstname.lastname@example.org or email@example.com). The Simion & Baciu website can be accessed at simionbaciu.ro.
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