| Romanian Trademark
Protection |
Trademarks are words or symbols that are susceptible to
a graphic representation meant to distinguish the products and
services of a natural or legal person from those belonging to
others. A trademark can be the key asset of a business, but its
registration is facultative. To obtain the protection of a trademark
in Romania, an applicant can register it at the national level, at
the European Union (“EU”) level, or at the international
level.
In Romania, the right over a trademark is acquired and
protected under the provisions of Law No. 84/1998 on trademarks or
geographic indications (hereinafter referred to as “Law 84”). This
law sets forth the necessary conditions to register a trademark and
the protections afforded to it, while also containing provisions
referring to the international registration of a trademark. In
accordance with Law 84, in case a person wants to register a
trademark only at the national level, that person obtains protection
just in Romania. Before January 2007, it was impossible for Romanian
nationals to register a trademark at the European level using a
single procedure because Romania was not yet an EU member state. All
this has changed with the advent of Romania’s accession to the
European Union.
Natural persons or legal entities register
their marks in Romania with the Romanian State Office for Inventions
and Trademarks (“OSIM”). For a more detailed look into the
procedure regarding trademark registration, please see the article
“Intellectual Property Protection in Romania” from March 2007, set
forth in The Romanian Digest™ Archive at http://www.hr.ro/digest_archive.htm.
In today’s global market, it is obviously quite important
for a business with export potential of any sort to obtain the
recognition of its right over a trademark in states other than in
the one in which it has been registered as a business. Before
January 2007, a Romanian business, in order to obtain protection for
its trademark in different European states, had to fulfill many
conditions in order to register it. Such an applicant had the
obligation to register its trademark in every state in which it
wanted to obtain protection. Since Romania’s accession to the EU,
however, any Romanian business can register its trademark at the
European level. This means that a trademark which is owned by a
Romanian person or entity can be registered at the EU level without
having to register it in every member state of the European Union.
As a result of Romania’s accession, in general, all
trademarks previously registered at the EU level are valid in
Romania, but the trademarks previously registered only at the
Romanian national level are not valid in the other EU countries, if
not separately registered in such countries or at the EU level.
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| Trademark Protection in the EU |
In order to register a trademark at the EU level,
the applicant must submit its application to the Office for
Harmonization in the Internal Market (“OHIM”) – Trademarks
and Designs, headquartered in Alicante, Spain. The procedure on
trademark registration at the EU level is set forth in the First
Directive no. 89/104 issued by the European Council, dated 21
December 1988, and approximates the laws of the member states
relating to trademarks; and in Council Regulation No 40/94, dated 20
December 1993, on the Community trademark. While the Directive only
provides for the basic measures regarding a well functioning
internal market and does not manage to totally approximate the
national legislation of the member states in the area of trademark
protection, the provisions of the Regulation are a legislative
instrument with direct applicability, which compulsorily applies to
all the countries that are members of the EU.
The community
trademark represents an independent system of protection in the EU,
but it is not a substitute for national trademark protection. In the
unique and unitary European procedure for registering a trademark,
different obstacles may arise, such as the impossibility of
utilization of a community trademark within some of the European
member state territories. If a national trademark was registered in
a country before its accession to the EU the coexistence of a
similar or identical trademark at the national and EU level may
appear.
Also, when there are two similar or identical
trademarks at the national and EU level, a business can obtain an
authorization to use such trademark throughout the EU, except in the
state where the trademark has been registered as a national
trademark, or it can obtain the annulment in court of a national
trademark. Such a possible conflict can be resolved according to the
principle of the oldest trademark. This principle provides, on the
one hand, that if the community trademark is the older one, the
national trademark will be annulled and the community one could be
used on the territory where the national trademark had been
registered, as well as throughout the entire EU. On the other hand,
if the national trademark is the older one, the owner of it may
continue to use it and the community trademark cannot be used on the
territory where the national one is protected by national law. This
prohibition is valid as long as the owner of a community or a
national trademark has not agreed to its use by someone
else.
Community trademarks constitute prior rights in
relation to all subsequent trademarks and other conflicting rights
in all member states of the EU. This allows the owners of Community
trademarks not only to protect their exclusive rights at Community
level, but also to prevail over later national
rights.
Similar to the national trademark, the
community trademark can be transferred in different ways, such as
cession, license or franchise within the entire EU market. The
option to transfer and assign community trademarks is essential for
the management of companies. A community trademark may be
transferred, separately from any transfer of the entity which is its
owner, in respect of some or all of the goods or services for which
it is registered. A community trademark may also be licensed for the
whole or part of the EU and a license may be exclusive or
non-exclusive.
As mentioned above, in case of a successful
application for a community trademark at the EU level, the applicant
obtains unitary protection throughout the EU. Such European
registration produces the same effects in every member state and any
transfer operation regarding the community trademark produces
effects within the whole area.
The registration of the
trademark, granted both at the national, and the EU level, confers
upon the owner the right of exclusive use of the trademark for the
goods and/or the services that have been registered for a period of
10 years from the date of the submission as well as the right to
prohibit others from the use of that particular trademark or a
fraudulent imitation thereof. If the trademark owner requests, the
registration can be renewed after the period of protection expires
for another period of 10 years. The rights deriving from a
registered or renewed individual trademark may be transferred in
whole or in part, in exchange for a fee or free of charge. Beginning
with the date of filling, the trademark owner is entitled to
prohibit third parties from using the trademark or reproducing it
fraudulently.
The unitary nature of the community trademark,
which covers all of the countries of the EU, means that formalities
and management can be kept simple, such as a single application, a
single language of procedure, a single administrative center, and a
single file to be managed. It is a simple procedure and applications
may be made both at national industrial property offices and
directly to the OHIM.
Only after obtaining a trademark, can a
business have an ownership right over it. A simple utilization of a
trademark does not confer to a business any protection in that
respect. The sooner a company registers a community trademark, the
safer it will be in the market place. |
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| International Trademark
Protection |
| In addition to the possibilities to apply at
the national and/or EU level for trademark protections, an applicant
may seek international trademark registration, in accordance with
the procedures set forth by the World Intellectual Property
Organization headquartered in Geneva, Switzerland. This
international procedural mechanism is based on the Madrid Agreement
Concerning The International Registration Of Marks (1891) and the
Madrid Protocol (1989) (the “Madrid System”), and applies to
many countries worldwide, including EU countries, the United States
of America and also states located on other continents. The Madrid
System offers to a trademark owner the possibility to have its
trademark protected in several countries by simply filing one
application directly with its own national or regional trademark
office. An international trademark so registered is equivalent to an
application or a registration of the same trademark effected
directly in each of the countries designated by the applicant. If
the trademark office of a designated country does not refuse
protection within a specified period, the protection of the
trademark is the same as if it had been registered by that office.
The Madrid System also simplifies greatly the subsequent management
of the trademark, since it is possible to record subsequent changes
or to renew the registration through a single procedural step.
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| Issues in the Protection of
Trademarks |
Once a business has protected its trademark, the
registration confers upon its owner an exclusive right over that
trademark, and third parties are prohibited from using it. The owner
of a trademark may request a competent court to prohibit any person
not having its consent from using any sign which corresponds, among
other things, to any one of these situations:
- a symbol
which is identical to a registered trademark, and referring to
identical goods and services;
- a symbol which, because of its
identity or similarity with the registered trademark, may lead to
confusion on the part of the public, including the association
between the symbol and the trademark;
- in case there is a symbol
affixed to goods or services which are identical or similar to the
goods and services for which the trademark has been registered that
may lead to confusion on the part of the public, including the
association between a symbol and the trademark.
After a
period of time, customers associate the quality of a product or a
service with the trademark, which means that the business enjoys
customers’ confidence. If a specific product or service becomes
associated with a trademark to the wider public before registration
of the mark, another business might be able to take advantage of it.
A business that uses an identical or similar sign which is also not
registered as a trademark will not lose the opportunity to obtain a
right over it. Simply put, to avoid such situations, businesses
should move expeditiously to make use of the registration procedures
for trademarks.
According to the International Classification
of Goods and Services for the Purposes of the Registration of Marks
under the Nice Agreement (the “Nice Classification”), a trademark
can be registered for one or more classes of services or products.
In fact, this agreement provides the classifications of the goods
and services for which a trademark can be registered. Also, based on
this classification, at the national level there is a
differentiation of the taxes for registration of a trademark. The
applicant must know that the Nice Classification is applicable,
beyond the national level, also at the EU level and at the
international level for all of the 82 states which are parties to
the above-mentioned agreement.
A community trademark may be
maintained in all the countries of the European Union by using it
effectively and genuinely in a single member state of the EU. Any
company, even if it wishes to use its trademark in only one or in a
few member states of the EU, may therefore validly obtain a
community trademark without having to fear revocation proceedings on
the grounds of lack of use. To register a trademark for more than
one product or service actually means cheaper advertising costs,
once the public has become aware and has gained confidence in part
of the products or services of the relevant owner. Similarly,
customers may start using other products or services of the same
owner, with no necessity for further strong advertising to be made.
This also means that customers may become increasingly more loyal to
companies for a certain category of products or services. |
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| Conclusion |
Trademark strategy is vital for the success of
the business both on the internal market and on the international
market. Today, it is easier for a Romanian business either to obtain
the protection of a trademark at the national level or to obtain it
at the European level. It is up to the individual business owners to
decide whether to protect a trademark in just one state, in more
than one state, or in the entire European Union.
Trademarks
have become one of the most important and valuable assets of a
company. Businesses must understand that, even if they are not
legally bound to register a trademark, only after a registration has
been made, will they be able to enjoy the protection granted by the
relevant laws. Business people are the only ones who can decide the
market position of their business and it is up to them if they
choose to develop a business at the national level or at the EU
level. For a Romanian business, it is more efficient to register
community trademarks, because they will then be able to gain more
easier costumers from all over Europe. |
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Editors
Note: It is our policy not to mention our clients by name in
The Romanian Digest™ or discuss their business unless it is a matter
of public record and our clients approve. The information herein is
correct to the best of our knowledge and belief at press time.
Specific advice should be sought from us, however, before investment
or other decisions are made.
Copyright 2008 Rubin Meyer Doru
& Trandafir, societate civila de avocati. All rights reserved.
No part of The Romanian Digest™ may be reproduced, reused or
redistributed in any form without prior written permission from the
publisher.
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RUBIN MEYER DORU &
TRANDAFIR
societate civila de avocati
Str. Putul cu Plopi,
Nr.7, Sector 1
Bucharest, Romania
Tel: (40) (21) 311 14
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Fax: (40) (21) 311 14 65
E-Mail: office@hr.ro
VISIT
OUR WEB SITE:
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