Romania Drafts New Trademark Law

On January 12, 2018, the Romanian PTO published the first draft of the new trademark law, aimed at transposing the Directive (EU) 2015/2436 into national legislation. The most important changes are listed below.

Absolute Grounds for Refusal or Invalidity

The draft law extends the absolute grounds for trademark refusal or invalidity by adding the words “or another characteristic” to the relevant article in the law, meaning that now the restrictions apply not only to shape signs but to other types of signs as well. Namely, according to the draft law, signs can be refused if they consist exclusively of the shape, or another characteristic, which (i) results from the nature of the goods themselves, (ii) is necessary to obtain a technical result, or (iii) gives substantial value to the goods.

Earlier Rights

The draft law widens the scope of earlier rights to include traditional terms, guaranteed traditional specialties and plant variety rights, along with the already covered designations of origin and geographical indications.

Trademark Infringement

The draft law broadens the concept of trademark infringement by establishing additional uses of a similar or identical sign that may be prohibited by the trademark owner and are not specified in the current trademark law, namely:

• Use of a sign as a company name or as part of a company name (however, the draft law does not clarify, like Directive (EU) 2015/2436 does, that in order to be prohibited, such use has to be made for the purposes of distinguishing goods or services);
• Use of a sign in comparative advertising in a way contrary to the provisions of the Misleading and Comparative Advertising Act No. 158/2008; and
• Use of a sign on packaging, labels, tags, security or authenticity features or devices, and placing these on the market.

Goods in Transit

Regarding the issue of goods in transit, the draft law prohibits third parties from bringing goods bearing an infringing sign into Romania, even if there is no intention to commercialize the goods in the country. According to the current law, counterfeit goods can only be seized if they are intended to be placed into circulation in Romania.

Revocation and Declaration of Invalidity

The draft law enables the Romanian PTO to handle applications for revocation and declaration of invalidity, which are now handled by the Bucharest Tribunal. Applications will be reviewed by a board consisting of three members of the PTO’s legal department. The board’s decisions have to be issued within three months of their pronouncement and can be challenged before the Bucharest Tribunal within 30 days of their communication date. The Tribunal’s decision is subject to appeal only before the Bucharest Court of Appeal.

Directive (EU) 2015/2436 provides that the deadline for establishing the administrative procedure for revocation and declaration of invalidity is January 14, 2023, which leaves sufficient time for the relevant authorities to implement an efficient system.

The Romanian PTO only offered interested parties 10 days to provide their comments on the draft law, which is a very short term, but it is still open to debate and subject to numerous amendments. It remains to be seen how the draft law will progress and how the authorities will go about implementing the proposed substantive changes.

By: Laura Leonte

For more information, please contact Laura Leonte at our Romania office.