PTO issues new instructions for trademark and GI examination procedures

Romania’s Patent and Trademark Office (PTO) has issued new instructions for the examination of trademarks and geographical indications (GIs), in effect as of August 1 2012.

The new instructions aim to optimise the workflow within the PTO, and ensure fast and efficient examination procedures. They also aim to reduce the financial burden for applicants, and prevent the decrease of national applications and renewals.

The instructions were issued as a result of the conclusions drawn following the implementation of Law 84/1998 on Trademarks and Geographical Indications, amended and republished in 2010, and its Implementing Regulations issued in December 2011.

According to the new instructions, all requests concerning new trademark and GI applications or existing registrations are to be processed immediately upon receipt. In this respect, the instructions define the structure and roles of various bureaus within the PTO’s trademarks department, and nominate the heads of all bureaus.

In terms of trademark applications, the new instructions provide that, during the preliminary examination stage, the PTO will conduct a search to identify any earlier applications or registrations for identical trademarks covering identical goods and/or services. The search report will then be sent to the applicant. At the same time, the PTO will send a notice to the holder of any earlier trademark(s) cited in the search report.

During the substantive examination of trademarks that include, are derived from, or are similar to a domain name, the PTO will consider that a top-level domain such as '.ro', '.com' and '.gov' indicates only the place where information can be found on the internet and, therefore, cannot render a descriptive or otherwise objectionable mark registrable.

The new instructions also expressly order that the examination of trademarks consisting of geographical names must be consistent with the practice of the Office for Harmonisation of the Internal Market (OHIM). This means that it will be possible to register trademarks that consist of geographical names when, because of the type of place the geographical name at issue designates, the public is unlikely to believe that the goods or services concerned originate from that place. These provisions closely follow OHIM’s examination manual, Section B, pages 43 and 54.

In addition, the new instructions state that, during the substantive examination, when examining if a trademark is capable of distinguishing the goods/services of one undertaking from the goods/services of another, account will be taken of identical and confusingly similar marks for identical products/services in the same class of the Nice Classification or similar goods/services in different classes. This provision seems to indicate that earlier rights could or should be cited to refuse a trademark on the basis that it does not meet the general conditions for registration set forth in the law. However, this provision and its consequences are unclear. Clarifications from the PTO regarding this point are expected shortly.

The new instructions also provide that, without prejudice to the legal term for the substantive examination of new applications (six months from publication for regular applications, and three months from publication for urgent applications), the PTO may, upon request, grant an extension of the deadline for the settlement of the examination fees. The substantive examination must not be carried out until the related fees have been settled. If the fees remain unsettled 30 days before the expiry of the examination term, the examiner may notify the applicant. The failure of the applicant to settle the fees will result in the application being refused.

An applicant may request an expedited examination of its trademark application when filing the application form. The fee for an expedited examination must be paid when filing the trademark application. Subsequent requests for expedited examination and/or subsequent payments of the related fees will not be accepted.

If oppositions and/or observations are filed against an application, these will be examined without taking into consideration whether the examination fees for the application have been paid. If an opposition is withdrawn, for justified reasons, before being decided upon, the opposition fee may be refunded upon request; such situations are to be assessed on a case-by-case basis.

If multiple oppositions are filed, each opposition will be examined and decided upon in chronological order, independently from the other oppositions, and disregarding the fact that, if one opposition is successful, the others will become without object.

In the new instructions, the PTO also committed to make the Trademarks Register more accessible, rational and functional, by September 1 2012.

Changes are also to be made to trademark application forms - namely, the following will be added: "The applicant hereby declares that its trademark application is filed in good faith".

Finally, job descriptions for the entire staff of the PTO’s trademark department are to be updated, in accordance with the new instructions.

Aura Campeanu, PETOŠEVIĆ, Bucharest