A New Beginning: Protecting Your Trademark Portfolio in The Emerging Romanian Market

by Marilena Oprea, SD PETOSEVIC, Romania SRL

Located in the Southeastern part of Europe, Romania borders the Black Sea, to the East, and is surrounded by Bulgaria, Serbia and Montenegro, Hungary, Ukraine and Moldova. Accordingly, due to its geographical position, Romania controls the most easily traversable land route between the Balkans, and the former Soviet Union. Although, Romania itself is not perceived as a producer of counterfeit products, it has the reputation of a transit country for goods coming from Asia into Europe. Keeping in mind its aspirations to join the EU, Romania
can ill afford a legal system that does not offer sufficient guarantees for eliminating IP infringement in the country. Although the relative poverty of the average Romanian citizen makes them prime consumers for counterfeit and pirated goods, given the external incentives for change, Romanians and their
government have begun to understand the value of intellectual property enforcement. As such, it has become possible to begin enforcing trademark rights in this jurisdiction. In order to do so, certain things must be kept in mind.

Trademark registration

From the legislative point of view, Romania has a modern trademark law (The Trademark Law of Romania; Law 84/1998; its norms of application, Government Ordinance no. 833/1998). Romania is also party to all of the important international conventions in the field of trademarks such as:

• The Madrid Agreement and Protocol regarding the registration
  of trademarks
• Nice Agreement regarding the international trademarks
  classification
• Vienna Agreement regarding the international figurative
  mark classification
• Convention regarding the organisation of WIPO
• Paris Convention for the protection of industrial property
• Treaty regarding Trademarks –Geneva, 27.10.1994.

Moreover, there have been recent important amendments to the Romanian Law on Industrial Property to bring it into line with various EU directives as follows:

• Government ordinance no. 100/2005 transposing EC/48/2004 regarding the enforcement of intellectual property rights
• Law 381/2005 entering into force as of 1 January 2006 amending the Government Ordinance no. 41/1998 regarding the fees in the field of industrial property protection. Mainly, the fees were reduced in order to encourage the registration and protection of industrial property rights
• Law 344/2005 transposing EC/1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights
• Government Ordinance 88/2006 regarding the Norms of application of Law 344/2005 mentioned above.

In Romania, the rights over a trademark are granted based on a first to register system; the protection is granted only by registration with the competent body. The first applicant will have priority in protecting and enforcing its industrial property right. Applications must be filed with the Romanian State Office for
Patents and Trademarks (PTO). The average timeframe to obtain the trademark certificate is one year from the application date, provided no oppositions are filed.

The following are interesting aspects regarding trademark
registration in Romania:

Commercial Names vs. Other IP Rights

As a consequence of the fact that PTO and Trade Registry do not have a common database, there are recent conflicts raised in practice between commercial names and trademarks. Accordingly, once a trademark application is filed, along with the search for previous identical or similar trademark registrations, it is advisable to search for commercial names as well, the
commercial name being an industrial property right protected under the Paris Convention.

Also, other previous rights can be opposed to a trademark application, respectively:

• the image or name of a well known person
• a protected geographical indication
• an industrial design
• a copyright
• any other IP right protected prior to the application of the respective mark.

Color marks

As the overall image of a mark is very important, the registration of the coloured trademark would be very helpful in enforcing the same. Specific details of the colour (such as Pantone code number) are not required but a description of the elements and their colour/s is fundamental.

Well Known Marks

Well-known trademarks are the exception to the first to register system. Under certain conditions, an unregistered well-known mark can successfully stop the registration of an identical or similar mark even for different goods and/or services. However, due to practical issues raised in proving the well-known character of a trademark, a registration is advisable. Moreover, a Customs
Watch Application cannot be grounded on an unregistered well known trademark.

Three-Dimensional Marks

While industrial designs have the purpose of providing a new aesthetic form to the product, marks are considered three dimensional trademarks where they have no other purpose but to attract consumers. Nevertheless, under the Romanian law, the shape of a product can be protected as a trademark if it is not common, nor functional. Moreover, in order to be a mark, the shape of the product:

• cannot be imposed by the nature of the product
• is not necessary in order to obtain a technical result
• may no add a substantial value to the respective product

Enforcement

Once the registration procedure is fulfilled, the trademark holder will have to be vigilant in protecting its assets watching closely over its image, quality of products or services, reputation on the market and especially over the potential infringements. There are various ways to enforce your trademark rights in Romania, such as:

• conducting permanent market watches
• following customs watch procedures
• monitoring the new intellectual property rights applications
• having a real, permanent and intransigent position on the market with respect to counterfeits
• constantly watching your intellectual property portfolio in the sense of registering the new packaging/representations of the trademark prior to their launching on the market.

Customs seizures

In relation to customs procedures, as of 3 February 2006, Romania has a new law transposing EC/1383/2003 concerning “Customs Action Against Goods Suspected of Infringing Certain Intellectual Property Rights and the Measures to Be Taken Against Goods Found to Have Infringed Such Rights.” According to the procedure, there are two ways of protecting trademarks at Romanian borders, ex officio actions or actions pursuant to a Customs Watch Application.

Ex officio actions initiated by the Customs Authority

In such actions, the Customs Authority will seize the counterfeit goods based on the information received from the competent authorities such as the PTO or the Romanian Copyrights Office. Nevertheless, it should be mentioned that, without the interest and participation of the trademark holder who is required to file
an intervention request within three working days the goods will be released on the market.

Filing a Customs Watch Application

In this case, a trademark owner can file a customs watch application with the General Customs Office (the “Intervention Request”) in order to suspend the customs clearance for products suspected of infringing intellectual property rights. The application is free of charge and is valid for a one-year period with
the possibility to be extended.

The Intervention Request should be drafted in accordance with the standard form as stipulated under the law and it must include:

• Compulsory information such as: trademark holder, persons to be contacted when discovering a transport, depiction of the trademark and Validity Certificate issued by the PTO which confirms the trademark rights of the Applicant

• Other available information such as: the pre-tax value of the original goods;
  the location of the goods and their intended destination particulars; identifying the consignment or packages; the scheduled arrival or departure date of the goods; the means of transport used; the identity of the importer, exporter or holder of the goods; the country of production and the routes used by traffickers; the technical differences, if known, between the authentic and
  suspected goods.

In support of the Customs Watch Application, the right-holder must also lodge its statement accepting liability, towards all the persons involved in the event that the legal action initiated is discontinued. The legal action initiated could be discontinued owing to an act or omission by the right-holder or in the event
that the goods in question are subsequently found not to infringe an intellectual property right.

In this statement, the right-holder will also agree to bear all costs incurred in keeping goods under customs watch, including the costs of the destruction of the
infringing goods. Within thirty working days as of the filing date, the Customs
Office will consider the application and will issue a decision. Provided the application is accepted, the decision will be issued to all customs officers in the country with a direction to seize goods suspect of violating the Applicant’s rights. It should be noted that Customs Officers will seize only the products that they suspect are counterfeits. Parallel imports will not be seized.

The person indicated in the Intervention Request will be contacted and asked to appear at the relevant border to advise whether or not the goods are in fact counterfeit. Within ten working days of the communication, the Applicant must file a legal action for the respective case. For good reasons, this term
can be extended by another ten days. Failure to comply with the law requirements within the specified time frame will enable the Customs Office to ignore the Intervention request and to continue the customs clearance for the respective goods.

Where legal proceedings have been commenced, Customs Authorities will seize the goods up to the date of the final judgement. The goods found to infringe the intellectual property rights, can be destroyed or transmitted free of charge, with the express consent of the IP holder, for charity purposes.

In certain conditions, the suspected goods can be destroyed without fulfilling any legal proceeding. This procedure is applied in case that, counterfeited goods are seized at borders and, after the Customs Authority notification, the trademark holder declares in writing that the respective goods are counterfeits. At the same time, the holder, the declarant or the addressee of the seized goods declares that the goods are abandoned in view of destruction or has not expressly opposed to the seizure, suspension of customs clearance or destruction of the goods within a period of ten working days. The IP holder will cover the costs involved. We believe that this procedure will be very carefully and rarely applied in practice and generally for small quantities of goods only.