ROMANIA
the complaint is filed, the case is outside the control of the trademark owner: all the investigations are done by the police and the prosecution office. “Invariably—or at least in the vast majority of cases—the criminal case is not pursued by the prosecutor. At most, the infringer gets a fine and the products are destroyed,” he says.
“Also, criminal complaints should be filed only in the case of counterfeited products that bear identical signs. In infringement cases where the sign used is only similar to the trademark, this approach is not recommended. Whether a similar sign infringes a trademark is a question for the civil courts,” he adds.
Te same difficulties apply when protecting and enforcing patents, but there are additional problems. For example, initiating a criminal case based on a patent infringement is very rare, says Marginean, because the police and prosecutor’s office are ill equipped to handle such cases. “It is not recommended to follow this route,” he says. “Also, injunctions can be harder to obtain in patent cases, since the infringement is usually not obvious or easy to prove during such proceedings where only some evidence is admissible—for example, a court-appointed expert report is not possible.”
“EVEN WHEN THEY ARE GRANTED, INJUNCTIONS ARE ‘IMPOSSIBLE’ TO ENFORCE. SHOULD A COURT DEMAND THAT AN INFRINGER STOP SELLING COUNTERFEIT PRODUCTS, THERE ARE NO REALISTIC DETERRENTS TO REOFFENDING.”
At the same time, it is well worth noting that the judges handling IP cases including patent infringements do not have a technical background, he adds. “Terefore in most cases the decision of the court is based exclusively on the result of the court-appointed expert report.”
Because the nature of each case is very specific, Marginean says there are no “magic solutions” to fix the problems facing IP owners. But he says businesses should use all measures available in Romania’s IP system, and employ the help of public bodies such as the Consumer Protection Agency, the Environment Protection Agency and the Customs Department. “Tese state authorities could ameliorate the lack of efficacy of the more traditional measures,” he says.
Fighting against infringing products brought into Romania—the typical case IP owners face—can be supported by the Customs Department, which can be “extremely helpful”. With the majority of products coming through the borders, customs officials have become experienced in the counterfeiting game and have been a “vital” component in brand owners’ strategies. “Right alongside customs are the border police, who complement their activities,” he adds.
While IP owners have problems enforcing their rights, there are other hurdles for them to jump over. Te State Office for Inventions and Trademarks (OSIM), crippled by the financial crisis, is struggling to
meet expectations. Marginean believes the downturn has affected
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42 World Intellectual Property Review July/August 2012
www.worldipreview.com
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