Unused trademarks vulnerable to cancellation actions

The first five-year grace period, provided to trademark owners in connection with the obligation to use their trademarks under the trademark laws that came into force in 1998, has expired. This means that any person with a legitimate interest may now request the cancellation of a mark if the owner has not used it effectively in Romania between July 23 1998 and July 23 2003.

The obligation of use under Romanian Law 84/1998 concerning trademarks and geographical indications mirrors the provisions of the international intellectual property treaties to which Romania is a signatory party - that is, the Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Trademark Law Treaty. The obligation to use, as well as the sanctions for non-use, also mirror the provisions of the Community Trademark Directive.

In this respect, Article 45 of Law 84/1998 provides that:

"Any person with a legitimate interest may request the Bucharest Municipal Court, at any time during the term of protection of the trademark, to deprive the owner of the rights conferred by such trademark if:

(a) Within a continuous period of five years, the trademark has not been put to genuine use in the territory of Romania in connection with the goods or services in respect of which such was registered, and there are no valid reasons for non-use; [...]

[The cancellation] of trademark rights shall take effect as from the date at which the court decision is final and binding."

The definition of 'genuine use' includes the following circumstances:

• use by a third party with the consent of the mark owner;
  
  
• use in a form that differs in certain respects from that of the registered trademark, but that does not impair its distinctive character; and
  
  
• use on goods or their packaging solely for exportation purposes.

The mark may not be cancelled if the owner could not use it because of circumstances beyond its control (eg, import restrictions, or other government requirements, on goods or services protected by the trademark).

The law puts the burden of proof of use on the trademark owner. This applies not only to judicial proceedings for the cancellation of the mark for non-use, but also to proceedings where the owner is alleged to have taken advantage of its unused rights (eg, opposition actions).

In conclusion, it is advisable that owners of registered trademarks in Romania carefully review their trademark portfolios and identify registrations that may be vulnerable to cancellation on the grounds of non-use.

Alexandru Harsany, Nestor Nestor Diculescu Kingston Petersen, Bucharest