ROMANIA
ROMANIA
visual level stemming from pictorial elements are not sufficient to differentiate the marks, because it is known that the word element has a stronger impact than the pictorial;
• Analysis of the products shows that they are identical; and
• Analysis of the risk of confusion starts with an assessment of the relevant factors to be taken into consideration, such as the low level of attention of the consumer when it comes to buying soſt drinks, the identity of the goods, and the high phonetic similarity of the signs.
This ruling was further appealed by the respondent with the Bucharest Court of First Instance. The court dismissed the appeal in November 2012 and confirmed the decision of OSIM’s Board of Appeal.
This decision constitutes a turning point in OSIM’s view of assessing similarity of combined trademarks. For many years, OSIM’s Board of Appeal was of the opinion that combined marks should be analysed as a whole, and consequently accepted the coexistence of marks like these which have some important differences at the level of the devices.
Te role of the device in the global composition of the mark was overestimated. It took roughly five years aſter CTMs became valid in Romania, and since the practice of OHIM was quoted as an example by the counsel for the examiners, to shiſt the importance from the device to the word.
Difficulties arising from the new Trademark Law
More than two-and-a-half years have elapsed since the law entered into force in May 2010.
The test of endurance of any trademark law is constituted by contentious procedures such as oppositions and appeals. The legal framework must ensure a coherent approach and a predictable flow.
A major failure is represented by the difficulty of lodging proceedings against a mark whose registration procedure has not been finished yet.
According to current proceedings, if a trademark application proceeds to registration when no opposition is lodged, or once an opposition has been dismissed, the Trademark Department issues a decision inviting the applicant to pay the registration fee, and informs him that, once this payment made, the registration of mark will be published and officially recorded.
Neither the law nor the implementing regulation contains provision regarding the deadline for payment, nor do they contain any
any 96 World Intellectual Property Review e-Digest 2013
sanctions for not making the payment. Under the old law, the mark was registered and the applicant enjoyed all the rights conferred, the only sanction being that the certificate was not issued.
If the applicant pays, the next steps flow normally. If the applicant does not pay, the mark remains in an uncertain status. It is not registered because all formalities are not completed, nor is it ‘in application’. Te uncertainty triggers legal problems for opponents for the following reasons:
• Te law allows the possibility of an appeal against the registration of the mark (very similar to the opposition as far as the merits, the only significant difference being that the appeal is lodged aſter publication of the registration, whereas the opposition is lodged aſter publication of the application). If the registration is not published because the applicant did not pay, consequently there is no registration and there can be no appeal. For the same reason, the possible opponent cannot initiate court proceedings for cancellation.
• In the absence of clear provisions as to the status of a mark admitted to registration but the formalities of which are not completed, it is difficult for third parties as well as for opponents to ascertain whether the mark does indeed enjoy rights.
• On the other hand, the possibility leſt to the applicant to pay the registration fee at any time (say, four years from the date of deposit) and complete the formalities also brings uncertainty to third parties, because the protection conferred by the mark is from the date of deposit and not from the date of recording the registration in the register.
In the absence of clear provisions in the law, interpretation is expected from court decisions.
Raluca Vasilescu is a partner at Cabinet M. Oproiu in Bucharest, Romania. She can be contacted at:
raluca@oproiu.ro
Raluca Vasilescu is a registered Romanian trademark attorney, CTM and design attorney, Romanian patent attorney and European patent attorney. She is also a member of INTA and ECTA and is a vice-president of AIPPI’s Romanian Group. At Cabinet M. Oproiu, Vasilescu specialises in the search, filing and prosecution of Romanian and CTMs and related litigation.
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