It is only in more modern times that Romania has become more and more involved in relation to trade marks. After 1990 trademarks assumed more importance especially in the realm of consumer products such as confectionary, drinks and latterly fashion. Whether people realize it or not, they deal with trademarks every day. Not only that, trademarks directly or indirectly influence the purchasing decisions of Romanian consumers, thereby making a trade mark a very valuable asset to any business. As Romanian lawyers in Bucharest we often receive requests to assist with Trade Mark Registrations. As most Romanian international law firms we assist in enquiries and oppositions to registration as required.
The law of Trade Marks in Romania is contained in Law no. 84 of 1998 and the rules and regulations of the State Office for Inventions and Trademarks (“OSIM”). A trademark can be a word, a person’s name, a drawing, a combination of letters, numbers, shapes, colours or even sounds, as well as any other symbol that serves to distinguish the products or services of an individual or of a company from those of other individuals or companies (“Art 2”).
From a Romanian legal perspective, a trademark is the ownership over the symbol, and anything derived from utilizing it. At the same time, it is an asset and as such it can be sold, rented, even pledged.
Last, but not least, a trademark is at the basis of any sales strategy, as it represents the company on the market, and it is the first thing customers associate with the products or the services that the company provides.
In Romania, exclusive rights over the trademark can be both obtained and protected through registering the trademark with OSIM.
There are four stages in the registration of a trademark:
1. Submitting the trademark registration application;
2. Publishing the registration application;
3. The registration application is reviewed by OSIM; and
4. The trademark is registered.
Prior to submitting the registration application, it is sensible to check that the trademark is available. This is done by a review of the public register. Whilst not obligatory it is a precautionary step that can save the client time and money if there is already registered the mark or a similar mark which would annul the original application.
Another aspect that must be verified before submitting the application is if the restrictions imposed by the law on the registration of a trade mark are applicable. For example, the trademark must not be too similar to other registered trademarks and it must not create confusion in the minds of third parties with regards to the quality or nature of the product or service or with regards to its origins.
Once it has been determined that the trademark is available and that the restrictions do not apply, the registration application can be submitted to OSIM. Anyone can apply to register a trademark with OSIM, directly or through a representative. However, if the applicant does not have their domicile, for individuals, or an office for companies, in any EU member state or in a member state of the European Economic Area they must be represented by a legal representative in front of OSIM during the registration process.
The registration application itself must include details related to the applicant, and eventually the representative, and a list of the products and/or services for which the trademark will be used. Depending on the circumstances there may be other details that must be mentioned in the application, but this becomes apparent during the registration process. The fees for submitting the application and for publishing it must be paid at the time of lodging the application.
There is a further fee payable for reviewing the application, but this can be paid within 3 months from the date when the original application is submitted.
OSIM will have thirty days to check if the application meets the legal requirements to be published, and if it does, the date of the regulatory deposit will be set as the day on which the application was submitted. However, in situations such as when there has been an application to register the trademark in another EU or EEA member state in the 6 months prior to submitting the registration application in Romania, the regulatory deposit can be set at an earlier date than the day when the application was submitted. Once the regulatory deposit date has been established, OSIM will publish the application in maximum 7 days.
After the publication, there will be a period of 2 months during which any interested persons may object to the registration of the trademark. OSIM will investigate the objections, if there are any, through a special commission which will issue a notice of approval or dismissal of the objections. The notice will be taken into consideration by OSIM when reviewing the registration application.
At the end of the review, OSIM can decide to approve the application or to dismiss it. The application can also be approved only partially. If OSIM approves the application, the trademark will be registered, and the registration published.
The registration will be in effect for a period of 10 years, starting with the date of the regulatory deposit. After the 10 years have passed, the registration can be renewed, but only for 10 years every time.
Romanian Trade Mark registration will continue to be an important and expanding area of intellectual property protection and all persons dealing in Romania should take care to ensure that t heir Trade Mark is protected, and if they have a new product or service then they should consider this protection.
Mihaela Lupu and Nicholas S. Hammond