August 06, 2020

Romania implements a new Trademark Law

The intellectual property office of Romania has implemented new Trademark legislation which came into effect on July 13, 2020. The legislation transposes the corresponding EU Directive, implementing the necessary trademark law amendments to align Romanian law with that of the EU. The publication of the enforcing regulations in relation to the new legislation is anticipated in the coming months.

Similarly to other EU member states who have incorporated the Directive into national legislation, the inclusion of the directive into Romanian legislation eliminates the requirement of graphical representation. This therefore allows the use of non-conventional representations of a trademark, such as sound, holographic and multimedia marks.

A literal interpretation of the scope of protection provided by class headings has also been introduced, providing a clearer defined scope of protection. Should the owner of a mark require clarification on the literal interpretation of their class heading, they may request this up until September 30, 2020 from the Romanian IP Office. A request for clarification must be accompanied by a declaration stating the goods or services which the mark should cover.

The new legislation also clarifies the opposition proceedings. Previously, third parties wishing to file an opposition must have done so within 2 months from the date of publication of the application. Under the new law, oppositions must henceforth be filed within 2 months from the date of publication of the grant decision.

Furthermore, a cooling off period has been introduced. This period constitutes 2 months, whereby opposition proceedings will be halted in order to afford the parties the chance to reach an amicable resolution. This period may be extended by an additional 3 months if necessary. Moreover, revocation proceedings together with those for administrative invalidity will be introduced before the Romanian Patent and Trademark Office on January 14, 2023.

The absolute absolute grounds for refusal have been further clarified and extended, with the introduction of a new ground. Henceforth, if a mark conflicts with a current designation of origin, geographical indication, traditional term for wine, traditional speciality guarantee or a plant variety, it will not be registrable. The previous scope of the absolute ground in respect of the refusal of a sign on the basis that it consists solely of a shape has been extended, now including "shape, or another characteristic." This allows the ground to cover signs that may now be represented in non traditional forms other than shapes.

Several deadline terms have been lessened considerably due to the amended legislation. For example, the deadline for filing a response to a provisional refusal has been shortened, previously constituting 3 months, and now being 1 month. This period is extendable up to a further 1 month thereafter. The terms for filing priority claim supporting documents, and the term for remedying deficiencies in an application have both been reduced to 30 days from 3 months. Finally, the period of time allowed for the filing of a disclaimer requested by the Office will now also be 30 days, decreasing from 2 months.

The trademark amendments implemented in Romania greatly improve the scope of protection and efficiency of the registration procedure and trademark maintenance. The country is set to benefit from an increase in filings for trademarks due to the amendments and harmonisation with the EU law, a vital step in maintaining the success of the IP field amidst the current global circumstances.

Author: Danielle Carvey