Impact of code changes on IP disputes

During the past three years Romanian legislation has undergone significant changes, which has had a major effect on IP rights. Considering that entirely new codes are being enacted and entering into force – the Civil, Civil Procedure, Criminal and Criminal Procedure Codes (the last two in the past two months) – the changes are of paramount importance, since they govern a wide array of legal issues governing IP rights.

The changes are intended to eliminate the non-unitary practice of courts and accelerate the settlement of cases, as well as providing clarity on several 'grey area' issues. Although this approach has been welcomed, it will take time for case law to catch up.

The new Civil Code, which replaces the 1865 code, came into force in October 2011 and introduced provisions on the protection of intangible assets (ie, intellectual creation and industrial property). The old Civil Code included no such provisions, but a specific set of rules is now available for such protection.

In February 2013 the new Civil Procedure Code was enacted. Among many substantial changes, it introduced new procedures for IP cases, involving swift and dedicated ad interim measures with respect to IP rights. The purpose of these provisions is to provide sufficient legal mechanisms to protect IP rights, offering rights holders various avenues to prevent free riding and loss. Rights holders can now rely on shorter deadlines for the courts to issue cessation orders, as well as explicit actions to safeguard evidence necessary for the case on merits.

With respect to defending intellectual property, the procedure is now limited to two levels of proceedings before the tribunal and the appeal court – cases are no longer brought before the High Court of Justice, a development that will speed up the entire process. 

These measures are in line with the specific laws regulating copyright and industrial property, which have also been amended recently:

• The Law on Copyright and Related Rights (8/1996);
• The Law on Trademarks and Geographical Indications (84/1998);
• The Patent Law (64/1991); and
• The Law on the Enforcement of Industrial Property Rights (100/2005).  

In February 2014 the new Criminal Code and the new Criminal Procedure Code entered into force, introducing amendments indicating that the legislature considered that intellectual creations should be protected uniformly. Therefore, the law implementing the new Criminal Code introduced clear provisions with respect to actions deemed to be criminal in the fields of industrial property and copyright.

On the same note, the Patent Law was amended with respect to actions unauthorised by the patent holder, such as making, using, offering for sale, selling or importing protected goods, which are deemed to be counterfeiting crimes. The law now clearly sets out penalties in that respect.

Furthermore, changes to the Law on Trademarks and Geographical Indications now explicitly outline the actions deemed to be counterfeiting crimes and the applicable penalties.

With respect to sentencing, the maximum prison sentence for counterfeiting has been reduced from three years to two years, but the application mechanism is now different. From now on, sentences for additional crimes will be served consecutively rather than simultaneously, as was the case under the old Criminal Code, and harsher penalites are now applicable for multiple offences.