On 13 July 2020, Law 112/2020 ("Law 112") for the amendment and supplementation of Law 84/1998 on trademarks and geographical indications entered into force, transposing the EU Trademarks Directive 2015/2436 (the "Directive") into national legislation.
We recommend trademark owners and applicants to run an assessment of their trademark portfolios in view of the new regulations, with the aim of identifying the measures they need to take so as to ensure compliance. All the more so considering that Law 112 introduces several relatively short deadlines for fulfilling certain procedures. This article analyses the main amendments that need to be considered upon registering new trademarks and for the purpose of protecting trademark owners' rights regarding their existing trademarks.
The condition of graphic representation no longer applies
While the previous legislation allowed only those signs capable of graphic representation to gain trademark protection, according to the new legislation, a trademark may consist of any sign, including sounds. For this, such sign needs to meet the following two cumulative requirements:
- it needs to be capable of distinguishing the goods or services of one undertaking from those of other undertakings; and
- it needs to be capable of being represented in the Trademarks Register in a manner which would enable the competent authorities and the public to clearly and precisely establish the subject matter of the protection afforded to its owner.
New provisions regarding the absolute grounds of trademark refusal
Under the old law, the absolute grounds for a trademark's refusal in respect of the lack of distinctive character of a trademark or regarding the customary or descriptive character of a trademark, were overcome once the trademark owner proved that the distinctive character of the trademark was gained through trademark use before the filing date. In the new law, these absolute grounds of trademark refusal can also be overcome if it is proved that the trademark gained a distinctive character due to its use after the filing date.
Also, unlike the former regulations, the provisions of Law 112 expressly recognise the protection of prior rights conferred by:
- designations of origin and geographical indications;
- traditional terms for wine;
- traditional specialities guaranteed; and
- plant varieties,
if such are protected under EU or national law or under international agreements to which the European Union or Romania are parties.
New rules on trademark opposition
Under the old law, concerned third parties could file oppositions within two months as of the date when the trademark application was published. The same two month term is maintained in the new legislation, but it starts running as of the date when the admittance of the trademark application is published, after the absolute grounds of trademark refusal are checked by the Romanian State Office for Inventions and Trademarks ("OSIM").
Moreover, opponents who miss the opposition deadline can no longer contest the registration of the trademark directly under appeal proceedings, as they were allowed to do under the old regulations.
New or amended procedural deadlines
Several procedural deadlines have been significantly reduced from three months in the old legislation to only 30 days in the new one. Thus, according to Law 112:
- the filing of priority documents and payment of official fee for claiming priority should be performed within 30 days as of the date of the trademark application;
- the proof of payment of examination fee should be communicated to OSIM at the latest within 30 days as of date of filing of the trademark application; and
- the trademark applicant can reply to official notifications whereby OSIM invokes the noncompliance with the registration requirements, within 30 days as of the date of such notification, and this term can be prolonged by another 30 days upon the applicant's request.
Also, a series of new procedural deadlines have been introduced, such as those regarding the trademark opposition, namely:
- a two month deadline as of the date of notification of the opposition to the trademark applicant, in order for the parties to reach an amicable settlement on the opposition proceedings; this term may be extended with a period mutually agreed between the opponent and applicant, but which cannot exceed three months; and
- a two month deadline by which OSIM is compelled to issue a decision on the opposition proceedings (this term commences as of the expiry of all terms the parties must comply with under opposition proceedings).
Extended protection for registered trademarks that designate goods and services under class headings of the Nice Classification
By Law 112, protection of the trademarks that designate goods and/or services under general wording of class headings of the Nice Classification may be extended to also cover other goods and services included in the alphabetic list of the corresponding classes.
In order to benefit from this extended protection, the owners of registered trademarks designating goods and/or services under general wording of class headings of the Nice Classification may declare, via a notification, that their intent at the date of filing was to also seek protection for goods and services beyond those covered by the literal meaning of that class heading. For this, the condition must be met that such goods and services are included in the alphabetic list of the class heading corresponding to the edition of the Nice Classification in force at the date of filing.
Such notification needs to be filed by 30 September 2020. Unless this deadline is met, the trademark shall be considered to only designate those goods and services covered by the literal meaning of the class heading.
Given the importance of this deadline, we recommend that registered trademark owners should identify those trademarks that designate goods and services under general wording of class headings of the Nice Classification. Once these trademarks are identified, their owners need to decide if they want to extend the trademarks' protection as detailed above.
It is important to highlight the importance of such trademark protection extension, due to the fact that it can help mitigating the risk of losing the rights to use the trademark for concerned goods and services in case a third party seeks to revoke the trademark for such goods and services due to non-use.
Severe penalty for failure to meet the deadline for paying the fee for issuance of registration certificates
Law 112 introduces the obligation for the trademark applicant to pay the fee for the issuance of the trademark registration certificate within 30 days as of the date of completion of the registration proceedings. This deadline is a novelty compared to the previous regulations, which did not stipulate a term for the payment of said fee.
Further, the new legislation introduces a severe penalty for failure to comply with this deadline. Thus, in case the fee is not paid in this term, it shall be considered that the applicant renounces the registration of the trademark.
It needs to be highlighted that according to the transitional provisions of Law 112, the payment obligation of this fee also applies to those trademarks filed and registered under the old legislation. In such case, the question is raised at the moment from which this 30-day term should be calculated.
One scenario is that OSIM would notify the owners of those trademarks that the registration proceedings had ended, in which case the term should run as of the date when the trademark owner receives such notice. On the other hand, since the owners of these trademarks have already been notified with the decision confirming the admittance to registration of the trademarks, by which the owners were asked to pay the fee for the registration certificate and for registration of the trademark in Trademark Registry, the moment from which the payment term runs could be the date when Law 112 was published in the Official Gazette.
In order to be on the safe side, we recommend owners of trademarks filed and registered under the old legislation to pay the fee for the issuance of the registration certificate by 13 August 2020.
New rules on legal remedies against breaches of the trademark owners' rights
Law 112 introduces a series of amendments regarding infringement and revocation actions, as well as an alternative administrative procedure in front of OSIM for trademark cancellation and revocation actions. Thus:
- as regards trademark infringement actions, the owner of a trademark shall not be entitled to prohibit the use of a later registered trademark unless that trademark is declared invalid;
- the cancellation actions on absolute and relative grounds of refusal can be filed anytime during the protection period of the trademark, unlike the former legislation which provided a statute of limitation period of five years as of the trademark registration for filing such actions; and
- concerned persons can opt to file trademark cancellation and revocation actions either via administrative proceedings before OSIM or via court proceedings before the Bucharest Tribunal. The provisions regulating the administrative proceedings in front of OSIM regarding the cancellation and revocation actions, must be adopted by 14 January 2023.
The new trademark law is expected to increase the protection level of the existing or future industrial property rights. To reach its goal of ensuring swifter and more efficient trademark registration procedures, the new legislation introduces a series of tighter deadlines for compliance with specific obligations which have an immediate impact on trademark owners.
Given the need for a quick reaction to ensure compliance with the deadlines introduced or amended by the new legislation, it is important that trademark owners run an assessment of their (existing or under registration) trademark portfolios, for the purpose of identifying the next steps to take to ensure that their rights over said trademarks are protected.