Trademark Office violates law by reintroducing examination on relative grounds

The Romanian Trademark Office has recently decided to apply an internal order that it had issued in July 2012, under which the trademark examiners are obliged to examine trademark applications on relative grounds. As a result, the Trademark Office now issues provisional refusals based on prior trademarks, even though the Romanian Law on Trademarks and Indications of Origin (84/1998) (modified and republished) provides only for the examination of applications on absolute grounds.

The abovementioned internal order was highly debated and its application was postponed until recently.

Law 84/1998 (unmodified) clearly stated that a trademark was to be examined against, among other things, (i) prior identical trademarks for identical or similar products or services and (ii) prior similar trademarks for identical or similar products or services, in order to determine whether there was a likelihood of confusion among the public, including a risk of association.

Law 84/1998 was then modified by Law 66/2010, which amended the examination process by limiting it to absolute grounds for refusal.

Surprisingly, in July 2012 the Trademark Office decided to issue an internal order which reintroduced the examination on relative grounds based on the interpretation of the existing articles of the law, which provide that a trademark cannot be registered if it cannot distinguish the products or services of an undertaking from those of another undertaking.

According to the general principles of law, an internal order issued by the Trademark Office cannot modify Law 84/1998 (amended and republished); therefore, this order clearly violates the current Romanian trademark legislation. 

It follows that applicants are now facing unlawful provisional refusals based on relative grounds. It remains to be seen how the courts will react in light of the fact that the Trademark Office is clearly in violation of the legislation in force.

Andra Musatescu, Andra Musatescu Law & Industrial Property Offices, Bucharest