Registration procedure to be simplified under proposed legislation

Following the rejection by Parliament of the bill amending Law 84/1998 on trademarks and geographical indications, a new bill has been approved by the government and is due to be presented to Parliament. The new bill introduces major changes with respect to the trademark registration procedure in Romania: certain steps have been removed, while others have been simplified. Moreover, the timeframe for the examination and registration of trademarks, as well as for challenging decisions issued in this respect, has been shortened.
The main novelty is the fact that the Romanian State Office for Inventions and Trademarks will no longer examine ex officio trademark applications based on relative grounds for refusal. Relative grounds will be examined only if an interested third party files an opposition against the registration of the mark within two months of the electronic publication of the application. Although the bill does not define 'electronic publication', it can be inferred from the practice of the office that this term refers to the publication of the application on the latter's website.
In addition, the bill expressly provides that third parties may file observations with respect to absolute grounds for refusal within the same two-month time limit.
Under the new bill, the office will thus issue decisions based on:

  • absolute grounds for refusal;
  • observations filed by third parties; and
  • oppositions filed by interested parties.
An applicant may appeal to the Re-examination Committee within 30 days of receipt of the decision. Interested parties may also challenge the decision by way of an appeal to the committee within 30 days of the publication of the registered trademark. Decisions of the committee may be appealed to the competent courts.
Another novelty is that the applicant may now request that the office examine the trademark application under an expedited procedure, subject to the payment of an additional fee.
In addition, the bill introduces new absolute grounds for refusal. The registration of the following signs will now be prohibited:
The bill also introduces new relative grounds for refusal and cancellation. Registration will be refused where:
  • there is a risk of confusion with a foreign trademark;
  • the applicant has acted in bad faith; or
  • the mark is similar to a sign used by a third party in the course of trade.
Finally, the bill introduces new concepts, such as that of a 'well-known trademark'.
Although the simplification of the registration procedure is to be welcomed, the new bill - if approved in its current form - is likely to give rise to confusion due to the absence of definitions and the imprecision of the wording.
Delia Belciu and Ana-Maria Baciu, Nestor Nestor Diculescu Kingston Petersen, Bucharest

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