JURISDICTION REPORT: ROMANIA
A CHANGE IS COMING? ROMANIAN TRADEMARK LAW
Gabriela Milcev Milcev Burbea IP and Law Office
Under Romanian jurisprudence, it is compulsory first to initiate an action for invalidating a similar or identical subsequent trademark; only aſter this procedure is followed (or simultaneously) can infringement action be initiated.
Such jurisprudence was justified before May 2010 due to the provisions of the Romanian Law on Trademarks, which stipulate that the Romanian trademark office (OSIM) had to examine the trademark registration considering relative grounds. Under the previous legislation, the above jurisprudence was grounded on the fact that the use of a trademark right, legally obtained, could not be limited, because a decision had been issued by a state authority aſter performing a complete examination of the trademark application. Terefore, the use of the subsequent trademark could be forbidden only subject to the issuance of a court decision invalidating the second trademark.
Mention should be made that the Romanian trademark law was amended in 2010 for the purpose of harmonising local legislation with the procedure of the Office for Harmonization in the Internal Market. Under the current legislation, OSIM should perform the examination of the trademark application only considering absolute grounds. Considering the above, in our view Romanian jurisprudence should take into consideration the provisions of the recent decision of the Court of Justice of the EU (CJEU, C-561/ 11, February 21, 2013) in order to ensure a consistent application of the trademark legislation.
However, even though the Romanian trademark law was amended, OSIM still performs an examination of the trademark applications based on relative grounds, in accordance with internal trademark office norms.
Considering the above, there is a risk that, on one hand, the owner of the previous trademark will claim that the examination should be done on absolute grounds and that the second owner has to take the risk of registering a ‘weaker’ trademark. On the other hand, the owner of the second trademark will maintain that a complete examination of the trademark application on absolute and relative grounds has already been performed and that accordingly, it is the owner of a trademark that is not identical or similar to the previous one, as established by a state authority.
In addition to the above, another difficulty in following the European Community jurisprudence could arise from the following scenario: in the case of a Community trademark, the owner may not have an interest in opposing a subsequent trademark during the registration procedure, and his interest in an infringement action may arise only when he becomes
“ROMANIAN TRADEMARK LAW PROVIDES THAT THE OWNER OF THE PREVIOUS TRADEMARK WOULD NOT BE ENTITLED TO INVALIDATE THE SECOND TRADEMARK OUTSIDE THE STATUTE OF LIMITATIONS OF FIVE YEARS.”
aware of the fact that the owner of the subsequent trademark has begun to use his trademark.
However, this argument could not be sustained with respect to a Romanian national registration, because from an economic point of view the chances are higher for the two trademarks to compete in a relatively smaller national territory, and Romanian trademark law provides that the owner of the previous trademark would not be entitled to invalidate the second trademark outside the statute of limitations of five years, computed from the registration date of the second trademark.
Tis is contrary to Article 54 of the Community Trademark Regulation under which the five-year statute of limitation is computed starting from the date when the previous owner became aware of the use of the second trademark.
Considering the above-mentioned decision of the CJEU as well as the amendments to the Romanian trademark law it is likely that the Romanian courts shall address some requests for a preliminary ruling to CJEU for the purpose of clarifying the above.
Gabriela Milcev is a partner at Milcev Burbea Intellectual Property and Law Office. She can be contacted at:
gabriela.milcev@
milcevburbea.ro
180 World Intellectual Property Review September/October 2013
www.worldipreview.com
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