JURISDICTION REPORT: ROMANIA
ENFORCEMENT ISSUES IN THE NEW TRADEMARK LAW
Raluca Vasilescu Cabinet M. Oproiu
Te new Romanian Trademarks Law entered into force on May 10, 2010 and makes several changes to how trademarks are enforced.
Background
Under the old trademark law of 1998, the trademark owner could ask a court to prohibit a third party from: • Affixing a sign on products and packaging
• Offering goods for sale or commercialisation, or holding them in order to offer services under this sign
• Importing or exporting goods under the sign • Using the sign on documents or in advertising.
In the last decade, the complexity of international transport and the development of counterfeit activities led to a need to modify the concept of infringement and counterfeit as well as to better define the role of intermediaries in this process. In these cases, ‘intermediaries’ almost always means carriers or transporters of goods.
Concept of the counterfeit
In the widest sense, counterfeit activities include all acts that breach trademark rights. In a book published in Romania in 2003, this concept is expanded to show that “this notion of counterfeit is wide, including the so-called counterfeit (stricto sensu) as well as all the acts assimilated to it, such as the imitation and the use without authorization” (Viorel Roş, Octavian Spineanu Matei, Dragoş Bogdan, Te Intellectual Property Right, Marks and Geographical indications). Tis definition is in line with the very detailed definition of counterfeit goods as presented in the EC Council Regulation of July 22, 2003, concerning customs actions against goods suspected of infringing certain intellectual property rights.
In respect to the responsibility of the carriers
Under the old trademark law, the trademark owner could prohibit third parties to import or export goods under the mark. In the new law, this article has been considerably improved. It reads as follows: “[T]he trademark owner could prohibit third parties to put under free circulation, import, export or put under suspensive procedure or any other destination as defined by the customs laws.”
Te amendment of the paragraph reflects the harmonisation with EC Council Regulation of July 22, 2003, concerning customs actions against goods suspected of infringing certain intellectual property rights. Tis regulation is equally applicable to the goods placed under suspensive
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“ THE CONCEPT OF THE COUNTERFEIT IS GRADUALLY EVOLVING TOWARDS A STATE WHERE THE DEGREE OF TORT OF THE CARRIER OR TRANSPORT AGENT IS LESS IMPORTANT.”
procedure, or those in the process of being re-exported or placed in a free zone or free warehouse.
Tis represents a response to the need of both courts and practitioners to ascertain whether different types of transport activities can constitute trademark infringement.
Te jurisprudence referring to transporters of counterfeit goods has become more consistent in recent years. According to the Bucharest Court of Appeal, “by excluding the accountability of the transporter, the purpose of the [trademark] law would be altered as far as the protection conferred to the trademark owner on Romanian territory, meaning that the interpretation of the legal provision cannot be restrictive”.
Te detailed definition of carrier activities and its link with the various customs regimes will help the courts decide whether carriers may be liable as infringers. Tis would prevent carriers’ classic defence that transport activity is not listed in the actions that a trademark owner can prohibit.
As the law stands, remedies available to the owner include a mix of a claim for tortious responsibility for the infringement and a claim for the protection of industrial property rights. Te ‘concept of the counterfeit’ is gradually evolving towards a state where the degree of tort of the carrier or transport agent is less important, encompassing everything from tortious responsibility to culpa levissima. Te intention of the law-maker is to protect the rights conferred by the trademark against any third party who holds the counterfeit goods.
Te amended provisions will help the courts make the connection between various laws governing the activity of freight forwarders, shipping agents, trade agents and similar providers, dismissing the defence of these people that they act according to specific laws that would not interfere with trademark law.
Raluca Vasilescu is a patent and trademark attorney and partner at Cabinet M. Oproiu. She can be contacted at:
raluca@oproiu.ro
World Intellectual Property Review September/October 2010 93
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