Recent Trademark Office practice prolongs registration procedure

Romania

In two recent decisions, the Romanian Trademark Office (SOIT) has finally accepted to register the national trademark applications for TIVOLI FAUCETS (Filing No M 2013 01648) (depicted below) and IRIS FAUCETS (Filing No M 2013 01649) (depicted below), based on the arguments filed by the applicant in two identical rounds. The SOIT had initially objected ex officio to the registration of the marks based on the existence of earlier similar trademarks, even if it is not entitled by law to raise and examine relative grounds ex officio.  

In the first round, the SOIT sent a notice to the applicant bringing earlier rights to its attention and requesting that it file a statement in its defence. After the applicant filed its statement, the SOIT issued a provisional refusal of protection based on the same reasons - the existence of earlier rights - and again requested that the applicant file a statement in defence. After the applicant filed for the second time its arguments in defence of the trademark applications, the SOIT finally issued a decision accepting to register the applications.

In another case involving an international trademark, the SOIT accepted to register the international trademark JOOBLE, depicted below (No 1158196), designating Romania (among other countries), based on the arguments filed by the applicant after the latter received a provisional refusal of protection issued by the SOIT based on relative grounds (raised ex officio). However, this time the SOIT did not first issue a notice, as described above.

  

Moreover, in a case involving the national trademark application for NORDSTAR PLUS (Filing No M 2013 03623) (depicted below), filed by the applicant for IRIS FAUCETS and TIVOLI FAUCETS, the SOIT accepted to register the NORDSTAR PLUS mark after the applicant filed arguments in its defence following the receipt of a notice regarding the existence of earlier rights identified by SOIT.

  

Even though the issuance of a notice and the invocation of relative grounds ex officio are not provided by the Romanian Trademark Law, as currently in force, the SOIT has recently developed a practice in this sense, which inexplicably prolongs the registration procedure of national trademarks and international trademarks designating Romania.  

Delia Belciu and Andreea Bende, Nestor Nestor Diculescu Kingston Petersen, Bucharest

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