Guest writer Elena Grecu covers a recent change in legislation which impacts trademarks in Romania, explaining what triggered the change and how can brand owners still protect them.

The State Office for Inventions and Trademarks (OSIM) will not reject anymore the registration of a trademark by default if it is similar or identical to another. See how you can protect a trademark under these new conditions.

OSIM has recently approved an order that removes its role of „watchdog of brands”, and which lets  the market to decide which trademarks will coexist. OSIM will check whether a trademark filed for registration violates the rights of other trademarks already registered, but allow similar trademarks.

OSIM has recently adopted the Order no. 5 / 14.01.2016 that repeal the Office Instruction no. 5/2012 used for explaining the law of trademarks.

By Law no. 84/1998 on trademarks and geographical indications, OSIM must examine only the absolute grounds in the examination proceeding and the aspects of similarity of two trademarks only in the opposition proceeding. This means that if the trademark "AAAAAAAA" is registered and the trademark "AAAABAAA" is filed for example or even "AAAAAAAA", OSIM shall not reject the new trademark registration on the grounds that another registered trademark is identical or similar.

The only way to being protected against a similar or identical trademark if you have already registered your trademark is to submit an opposition to OSIM within two months, as the law provides. Not submitting the opposition can be interpreted as a tacit agreement for the similar trademark registration.

In 2012, OSIM tried to help the owners of trademarks by requesting a written agreement in this sense. Otherwise, OSIM considered that by filing an identical or near-identical trademark the rights of the already existing trademark will be violated, which is to link the product or service to producer or provider.

Back then, the Office Instruction no. 5/2012 provided that "fulfilling the condition that the signs are capable of distinguishing goods or services of one industrial unit from those of another industrial unit, the examination will regard the identity or similarity to the risk of confusion on the consumer perception of products / services identical from the same class or for similar products / services from different classes".

The problem was that this instruction was an addition to the law, which is not allowed. While the law clearly provided that OSIM can review and possibly reject a trademark registration on the grounds that it is identical or similar to a trademark already registered only in the opposition proceeding, an instruction of the provided service could not change the strict procedure.

As a result, the instruction was disputed in various proceedings before OSIM, but the official position remained without an answer until this year.

What changed the OSIM position, in particular what caused the repeal of Office Instruction no. 5/2012? It was a trademark, "SIGMANET - YOUR SMARTER CHOICE”,  which was rejected upon registration on the grounds of the Office Instruction mentioned above.

I explained to the trademark owner the illegality of this Office Instruction and choose to appeal the decision of rejection in the Court. We won in first court, the Bucharest Tribunal admitting the action and providing trademark registration. OSIM appealed the sentence, but it was rejected because we proved to the Court of Appeal that according to the procedure provided by the Law no. 84/1998 and enforced by the Regulation governing the application of the law regarding the trademarks from the year 2010, OSIM is obliged to register the filed trademark if no owner of an already registered trademark files an opposition, which happened in our case. As a result, on 01.11.2016 the Court of Appeal dismissed the appeal and upheld the sentence of the Bucharest Tribunal in the disposition of the registering the trademark.

Because of this litigation, OSIM issued the Order no. 5 / 01.14.2016 which canceled the Office Instruction no. 5/2012.

What will happen from now ?

The examination proceeding will follow its natural course, provided by the law of trademarks. In this case, the trademark filed for registration will be published in the Official Industrial Property Bulletin and if no one files an opposition within two months, as the laws provides, OSIM will examine the trademark only in terms of absolute grounds: if it’s not descriptive, if it’s not misleading or immoral etc. and then will proceed to register the trademark. OSIM will not make any checks on the identity or similarity to the earlier registered trademarks in the absence of an opposition, leaving to the market to decide which trademarks will coexist.

So the owners of trademarks should examine periodically the Official Industrial Property Bulletins (alone or with an industrial property attorney) so they can file an opposition within the legal period for identical or similar trademarks to its trademark already registered, otherwise they’re assuming to give a tacit consent to the registration of such trademarks.

By Elena Grecu, guest writer