ABOUT TRADEMARKS
What is a trademark?
The trademark is a sign which is susceptible of graphic representation, serving to distinguish the goods or services of a natural person or legal entity from those belonging to other persons. Generally, there may be protected as trademarks any distinctive signs, such as: words, including names, designs, letters, digits, figurative elements, tridimensional shapes and especially the shape of the good or package or combinations of colors, as well as any combination thereof.
How to protect a trademark in Romania?
A trademark may be protected in Romania by 3 different ways:
- by national way with OSIM, filing a national trademark application;
- by international way, through the "Madrid system" (in case of foreign applicants, provided that the same trademark has been previously registered by national way before the national office of the country of origin), namely by filing an international trademark application with the World Intellectual Property Organization, Geneva, Switzerland, according to the Madrid Agreement or Protocol and designating Romania either directly in the international application, or subsequently, within a subsequent designation request;
- by regional way as Community trademark with the (European) Office for Harmonization in the Internal Market in Alicante, Spain, obtaining protection within the entire European Community.
Claiming a priority
When a trademark application has been duly filed for the first time in one of the member states of the Paris Convention or of the World Trade Organization, the applicant may claim the conventional priority of the first application within a subsequent application filed in Romania for the same trademark, provided that the latter application is filed with the Romanian PTO within 6 months as counted from the date of the first application. Also, when the applicant has exposed its goods or services for which protection is sought at an international official or officially recognized exhibition, organized in Romania or in another member state of the Paris Convention, the applicant may claim the exhibition priority, provided that the application is filed with the Romanian PTO within 6 months as counted from the date when the goods or services were exposed for the first time within the said exhibition.
As a consequence of claiming a priority, conventional or exhibition type, the trademark application benefits of anteriority with respect to any other applications filed subsequently to the date of the priority claimed.
Types of marks that may be registered in Romania and registration criteria
From the applicant's point of view, the mark may be individual (whose applicant is a natural person or a legal entity), collective (whose applicant is an association), or certification mark (whose owner is officially authorized to certify a certain characteristic of the goods /services for which the mark is used). From the point of view of the mark's shape, it may be a word mark, combined or figurative, white-black or color; figurative marks may also be tridimensional.
The application must contain a single mark, while the registration may be requested for one or more classes of goods or services according to the international Nice classification.
In order to be granted protection in Romania, a trademark must fulfill three general conditions: not to infringe other earlier rights, to be distinctive in regard to the goods or services to which it refers and not to mislead the public as in several respects, such as the extent of protection, the quality of the goods or services to which it refers, the geographic origin, etc.
Registration validity and renewal
The initial protection granted to a registered trademark is of 10 years as counted from the date of filing the application and it may be unlimitedly renewed for successive periods of 10 years, before the expiry of each period of protection, by filing a renewal application and paying the corresponding official fees.
Rights conferred by the registration of the trademark
The owner of a registered trademark benefits of the exclusive right to use it in commerce in connection with the goods or services for which it has been registered. The owner is entitled to request the Court instance to forbidden any third party to use a sign which is identical or similar with its trademark and used for similar or identical goods or services, or, in case of well-known marks, even for different gods or services.
The use of a trademark
The Romanian law does not provide for filing a statement of use of the trademark within the registration procedure. However, when a registered trademark was not used at all within any time period of 5 consecutive years of protection, for the goods or services for which it has been registered, any interested third party could challenge the registration, by requesting the competent court instance in Romania to revoke the exclusive rights of the owner over the trademark.
The transfer of trademark rights
The rights upon trademarks may be transferred at any stage of the registration procedure or validity period, through assignment or license. Through assignment, rights upon the trademark are transmitted definitively, totally or partially. Through license, only the right to use the trademark is transmitted, and it may be limited in time, limited territorially, or it may concern only a part of the goods or services for which the trademark has been registered. The license may also be exclusive or non-exclusive.