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The co-existence of trademarks and designs in Romania

After the historical moment of the European Union’s expansion on 1 May 2004, which was the biggest expansion in the European history, Romania is ready to assume, as of 1 January 2007, the rights and obligations which result from the membership.

The last enlargement of the European Union, in 2004, raised serious problems with respect to intellectual property rights because it was the first time that an enlargement had occured in the community trademarks system. In this situation, the national trademarks' owners of the newly-come countries in the Union had to negotiate with the community trademarks' owners to carry on lawsuits with them in order to mantain their rights or to reach a compromise. Therefore, the Romanian tradesmen should know henceforth how they stand in order not to develop trademarks that they would lose in 2007 and thus see their business ruined.

The community architecture of the trademarks' law sets forth the co-existence of the national trademarks regines with the community trademarks. The intellectual property, and implicitly the right over the trademarks, is governated by a series of international conventions, which do not establish "international" rights of intellectual ownership but only set forth recognition procedures of the already proclaimed rights in a State, on the territory of another State. The Member States have not addressed the perspective of the total unification of the existing national legislations in this field but only the implementation of a protection mechanism at community level to be used by the rights’ owners as an alternative to the national mechanisms.

The objective of the measures adopted in this respect was, on the one hand, to create a trademark that could be registered in the entire European Union and on the other hand, to harmonise the judicial system of the national trademarks and the protection granted to them. The first step was the adoption of the Directive no. 89/104/CEE, by which the conditions of registration of the national trademarks and the rights granted by such trademarks were harmonised. The Directive enumerates the rights granted by the trademark and refers to the basic conditions regarding the trademark registration, licences and trademark use.

This step was followed by the adoption of the Council Regulation no. 94/04/CE regarding the registration of the community trademark, according to which the European unitary and autonomous trademark produces the same effects on the entire community territory and benefits from the protection granted by one single set of rules. This regulation was supplemented by the Commission Regulation nr. 2868/95/CE for the enforcement of the Regulation no. 94/40, which includes rules, related the trademark’s registration, details about the trademark’s representation, about the priority of filing the trademark registration application and about licences. Subsequently, the Commission Regulation no. 216/96/CEE established the procedure applicable in front of the appeal chambers of the Office for Harmonisation in the Internal Market.


The basic principle: The automatic extension of the actual rights

According to the European Union Accession Treaty, as of the integration, the community trademarks’ owners shall benefit from protection which shall automatically extend to the territory of the new Member States. In this situation, in case the trademarks registered in Romania are identical or similar to the community trademarks, registered for identical or similar goods, solutions must be found because such trademarks cannot coexist without an agreement between the owners.

The community trademark does not replace the national trademark but it represents in itself an independent system of protection. Moreover, the protection by the community trademark does not have a compulsory or exclusive character and the companies that are not simultaneously interested in the trademarks’ protection throughout the European Union may protect their goods/services nationally (Paris Convention) or internationally (Madrid System) only in those States in which they have economic interests. Irrespectively of the national, international or community registration of a trademark, the trademark shall produce the same effects on the national territory and may co-exist with the trademarks which were directly deposited in the relevant countries.

The principle of trademark territoriality does not prevent the situation in which an identical or similar trademark, from both the name and the protected goods/services point of view, be registered by different owners, in different states. Upon Romanian’s accession to the European Union certain contradictions are likely to appear between the unitary character of the community trademarks and the principle of the two systems. Therefore, in order to observe the unitary character, the community trademarks registered before Romania’s accession must extend their effects in Romania. In case the national trademarks are identical or similar to the community trademarks, registered for identical or similar goods, although registered in good faith, they cannot co-exist without the agreement of their owners.


Solutions for settling conflict between national and community trademarks

Depending on the moment when the trademarks were registered, there are two solutions available in the event that the owners fail to reach an agreement regarding the coexistence of the trademarks:

  • If the national trademark is prior registered, it is forbidden to use the community trademark on the national territory, but the trademark remains valid on the rest of the community territory, where the Romanian trademark cannot be used.
  • On the other hand, if the community trademark is “earlier” the annulment of the national trademark registration may be requested.

If both parties wish to amicably settle the problems generated by situations such as the similarity or identity of the trademarks, the parties may, at any time, conclude a transaction by which they mutually agree upon the use of their trademarks, by means of variation of the interest domains or the limitation of the registrations for classes of goods or services which are of smaller interest to them.

It therefore results that, although the national system co-exists with the community system, it does not mean that the identical or similar trademarks should co-exist as well, although they have been registered in good faith at that date, if their use is likely to create the risk of confusion or association for the consumer.

In conclusion, on the date of conflict between the national trademark and the community trademark the principle of priority of the registration shall apply, so that on the Romanian territory the prior registered trademark shall survive.

All the conflicts regarding the trademarks shall be settled amicably or by addressing the courts of law applications for the annulment of the trademark registration, the acceptance of such applications being likely to cause substantial damages for the owners of some reputable trademarks on the Romanian territory, but which were registered in Romania after the registration of certain identical community trademarks.


Amendments to the Trademarks’ Law no. 84/1998

The existence of an international system of trademarks registration and the creation of the community trademark allows an owner to benefit from a much-enlarged protection from the geographical area point of view.

The harmonisation, with respect to the trademarks is opportune, as it provides the framework on the basis of which the trademarks owners can plan their marketing strategy, being at the same time confident that their trademarks can be secured in different countries in an identical or similar way.

As a consequence, the Law no. 84/1998 regarding the trademarks and the geographical indications is in the process of being amended and the suggested amendments are about to be passed in the Parliament and published afterwards in the Official Gazette by the end of this year.

The object of the amendments to the Law no. 84/1998 is to harmonise the national trademarks legislation with the community legislation in force.

The first and the most important amendment brought to the current trademarks’ law is the waiver of the examination for relative reasons by the Romanian Patent and Trademark Office, leaving it to the interested persons to file oppositions to the registration of a trademark on the Romanian territory.

Another important amendment to the trademarks’ law is the publishing in electronic form of the registration application assigned with a deposit date, within 30 days of the application registration date by the Office. Within two months of the publication of the trademark’s application, any interested person may raise objections with respect to the trademark’s registration on absolute grounds of refusal or can raise an opposition based upon the relative grounds of refusal. Should it be found that the conditions for the registration of the trademark are met, the Romanian Patent and Trademark Office will register the trademark and publish within two months the decision of registration in the Official Bulletin for Industrial Property; the Trademark Registration Certificate is then issued.

The newly introduced time limits are aimed at substantially reducing the period for acquiring the trademark registration certificate.

It should be noted as well that the institution of revocation the owner’s rights granted by the trademark has been introduced so that, in case the registration of a trademark, the renewal of the registration or the entry of an amendment in the Trademarks Register has been obviously made by mistake, the Romanian Patent and Trademark Office may, within 3 months as of the registration or entry date, revoke such registration, renewal or entry of the amendment.

The new trademarks’ law has introduced a special chapter with respect to the community trademark which regulates, (beside the provisions regarding the community trademark applications received by the Romanian Patent and Trademark Office and the conversion of the community trademark into a national trademark), the settlement of disputes having as object community trademarks, for which the Regulation 40/94/CE assigns, pursuant to Art. 91.1, the jurisdiction to the Community Trademark Courts under the Bucharest Court that rules in first instance. The Bucharest Court of Appeal judges the appeals against the decisions of the Bucharest Court with respect to the community trademarks.


Protection of industrial designs

In the context of Romania’s accession to the European Union, a full harmonisation of the Romanian design legislation with the provisions of the Directive CE98/71 regarding the protection of designs is attempted.

With respect to the non-opposable disclosure, the wording was extended a little in accordance with Art. 6, Directive CE 98/71 as follows: the disclosure is not taken into consideration if the design or the model for which protection is required was made public:

  • By the author or his successor in rights or by a third party on the basis of the information provided or of the acts of the author or his successor;
  • During the 12 month-period prior to the registration application deposit date or, if priority is claimed, on the priority date.

A new provision regards the “designs of inter-connexion”; therefore, a definition closely related to the community provisions has been introduced in order to register a design that allows for multiple assemblies or connexions between interchangeable goods within a modular system.

Another amendment relates to the time limit for the publishing of the design and model application, which is intended to reduce the registration procedure in general, so that the publication shall be within 4 months as of the application deposit and not within 6 months as it was stipulated in the old legislation. At the same time, as in the case of the trademarks’ law, the period for appeal was reduced from 3 months to one month, the material competence of settling the disputes related to designs and models belonging to the Bucharest Court – within the special established section for intellectual property disputes.


Conclusions

The integration into the European Union will cause significant changes; so there will be great pressure on the local producers, who will have to make themselves known and to distinguish the local goods from the European goods which will invade the Romanian market. On the other side, the consumer’s culture has changed and the consumption needs are different. In this context, some companies must level their offer to the competition or even exceed this level, extend their range of products and take a different stand. Romania’s integration into the European Union will certainly be a profitable act in the development of our country, in the promotion of the long wished-for and waited economic and social progress, which can only be reached on long term within coherent and dynamic structures.