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New Regulation for Implementing Trademark Law entered into force starting with December 03, 2010

Changes brings by the new Regulation for implementing the Romanian Law on Trademarks and Geographical Indications are the following:

General Provisions

The general provisions of the preamble of the Regulation were introduced definitions of terms such as interested person, use of the mark, extent of use and degree of knowledge of notorious marks. In addition, it defines in a detailed manner what constitutes signs of high symbolic value: religious symbols, emblems or logos belonging to companies or charitable foundations, cultural associations, historical figures, etc.

Representation

Regarding the representation in the proceedings before the Romanian PTO the new Regulation for implementing the law provides the following situation:

  • Where the applicant, owner or interested person does not have a representative neither a domicile or address in Romania, should choose an address for correspondence in Romania;
  • Where the applicant, owner or interested person not having domicile or address in EU, it is compulsory to be represented by an authorized representative, except for the proceeding of filing the application.

Furthermore, correspondence regarding new trademark applications or registered trademarks will have no effects for the Romanian PTO if the power of attorney is missing. On request, the PTO will grant 30 days for filing the power of attorney.

Reinstatement of rights

The new Regulation has introduced the institution of reinstatement of rights for the applicant or owner who, without intention, failed to comply within a term granted by PTO, if proves that it taken all the reasonable measures to comply with said proceeding within the legal terms. This will not apply for the case where the applicant failed to invoke the priority, the term for filing observation or opposition or the term of appeal.

Filing an application and publication

Both the new law and regulation for implementing the law provides the possibility of online applications but still not working. If further to PTO’s formal examination the application for registration meets all required conditions, shall received deposit date and will be published in electronic format, within seven days from filing date.

Prosecution

Within two months after the publication of the trademark application, any interested parties may submit observations on application mark for absolute grounds for refusal or file oppositions on relative grounds for refusal.

    Observations
  • Where observations are received for the new trademark applications published, the PTO will decide whether will communicate it to the applicant. The interested person who filed observation will not become party in the examination proceedings of the trademark application.
    Oppositions
  • The main chances brings by the new Regulation for implementing the law provides that late filing of the grounds of opposition and the PoA, namely within maximum two months, could be filed on request and will be subject of official fee amount to 25 Euro. Further, the PTO notifies the applicant on the opposition and the latter may submit its point of view within 30 days from receipt of the notification. This term could be extended with another 30 days on applicant’s request. Regarding the proof of use that should be filed by the Opponent on the Applicant’s request, the new regulation provides that during a period of five years immediately preceding the date of publication of the mark which is opposed, the earlier mark was the subject of an effective use in Romania, for the national or international registration or at least in a EU member state for CTM registrations.

Examination proceedings

The Romanian PTO conducts the examination of the applications on absolute grounds within 6 months from receipt. For the applications that pass through all procedures successfully, the PTO issues the registration decision and publishes, within two months from the date when decision was taken, the registration of the trademark in the Trademarks Official Bulletin. Romanian PTO shall examine with urgency on request and subject to a surcharge a trademark application within three months from the publication of trademark application.

Appeal

Appeals against the PTO’s decisions must be filed within 30 days from its publication in Official Bulletin or from the date of receiving. The new regulation of implementing the Romanian law on Trademarks and Geographical Indication contains specific provisions regarding summoning the parties and the term within the defendant can file a counterstatement, namely five days form date when the hearing was set.

Community trademark registrations

The Regulation has introduced a new chapter for community trademark registrations that regulates filing of CTM application, seniority and conversion of CTM into national.

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