ROPTO takes a wrong turn on the harmonisation highway

Since its accession to the European Union in 2007, Romania has been progressing down the highway towards harmonisation of its legal system with that of the European Union. The use of the term ‘highway’ is intended to aid understanding of the internal procedures that followed accession, as they were characterised both by speed and by a lack of ability to change direction.

The industrial property legislation needed to be harmonised with the corresponding EU legislation, especially in light of the influence of the Office for Harmonisation in the Internal Market (OHIM).

Therefore, the Trademark Law (84/1998) was amended by Law 66/2010 in order to align it with EU law, in accordance with EU Directive 2008/95/EC. The directive was intended to harmonise differences in trademark regimes that could impede the free movement of goods and the provision of services, as well as distorting competition within the European Union. It provided a framework of minimum provisions applicable throughout the European Union, but did not seek to impose obligations on national trademark registries. It did not stipulate how member states should deal with the registration, revocation and invalidity of trademarks; these elements were left to the discretion of national bodies.

The main change to national law, which took immediate effect, was the removal of the ex officio examination for relative grounds for refusal.

ROPTO instruction

The removal of the examination for relative grounds for refusal – a simple but harmonised procedure intended to encourage the registration of national trademarks – was not welcomed by the Romanian Patent and Trademark Office (ROPTO). On June 31 2012, two years after the new law came into force, ROPTO published Working Instruction 4 (amended as Working Instruction 5 on October 17 2012), which in Point 11 interprets the new Trademark Law in an original way: “With respect to the provisions of Art. 5 (1) (a), corroborated with the provisions of Art. 2 of the Law, namely the fulfilment of the requirement that the ‘sign allows to distinguish the goods or services of one company from those of another company’, the examination shall be made in terms of identity or similarity, up to the likelihood of confusion created among the consumers, for identical goods/services of the same class or for similar goods/services of different classes.”

According to these instructions, ROPTO will conduct an ex officio search of all three registers containing trademarks that are valid in Romania (national, international and Community trademarks) in order to identify any identical or similar earlier registered trademarks and compile a report of the search results.

The search report is then sent to the applicant and any possible earlier rights holders which have been identified.

ROPTO considers that this created conflict with the absolute grounds for refusal, based on the fact that a trademark application which is identical or similar to an earlier trademark cannot be registered because it lacks the capacity to distinguish the goods or services of one trader from those of another, even if the distinctiveness of one sign is not associated with its originality and implies no novelty or creativity.

This overlap between distinctiveness and the availability of registration exceeds the provisions of the new Trademark Law, under which ROPTO’s sole examination process is limited to absolute grounds for refusal. Unfortunately, this type of examination constitutes examination for relative grounds for refusal rather than absolute grounds.

In practice, after publication ROPTO conducts an official search and where a potential conflict with an earlier identical or similar trademark arises, it conditions the registration on the applicant obtaining the consent of the owner of the trademark identified in the report.

In conclusion, instead of following OHIM practice and simply notifying the applicant and the owner of the earlier registered trademark of the conflict, ROPTO will issue an official provisional refusal invoking absolute grounds, whereas in fact this is a clear case of a relative grounds conflict because the registration is conditioned on “obtaining the consent from the holder of the earlier right”.

Confusion for applicants

This practice has created mass confusion for applicants, which had just became familiar with the provisions of the new law removing the examination for relative grounds. Many renounced their applications after inadequate assessments were received from local specialists, while others continued but were thwarted by refusals received from earlier rights holders, which were unaccustomed to giving consent to third parties – especially when they were potential competitors in the same market.

These artificial conflicts caused by the controversial new provisions would never have become oppositions or appeals before ROPTO, as it is rare in Romania to purchase monitoring services, especially for the owners of small portfolios.

By behaving in this way, instead of taking its official, neutral position (as set out by the new harmonised law), ROPTO played the role of an opponent and sought to secure the rejection of applications, rather than allowing free competition to prevail.

The free competition that the new law aimed to introduce, in accordance with EU legislation, has been seriously affected by the practice of ROPTO, which appears to have taken a wrong turn on the harmonisation highway.

Under Law 84/1998, the holder of earlier rights (as identified by the official report) could, upon notification of the existence of an application for an identical or similar trademark, file an opposition within two months of first publication or file an appeal after the second publication (another highly debated matter). This role has now been assumed by ROPTO, which, if no opposition or appeal is filed, will condition the registration on the applicant obtaining consent from the owner of the trademark(s) identified in the report.

This practice not only reinforces ROPTO’s power to perform a relative grounds examination and to reject registration of a trademark based on Article 6 – accepting the existence of an earlier, similar trademark – but also imposes on the applicant a requirement that is not found in the new law. In other words, these instructions add new provisions to the law.

Contentious situations may arise in practice – for example, in case of an opposition filed by the owner of the earlier trademark mentioned in the official report. It is unclear how ROPTO can decide on the opposition if it has already decided that the application was identical or similar to the earlier trademark in its own report, conditioning the registration on the consent of the earlier mark’s owner.

Romanian industrial property specialists are debating the efficiency and legality of these instructions, and ROPTO’s interpretation of the law has been received with reservations. So far, except for roundtable discussions with ROPTO officials, no legal procedures have been commenced. Thus, as yet the courts have not been asked to rule on the legality of ROPTO decisions based on these instructions. It is hoped that this situation will be clarified soon through negotiation and settlement rather than in the court, where any interested party may invoke the exception of the illegality of these instructions.

Rominvent SA

35, Ermil Pangratti Str Sector 1

011882 Bucharest

Romania

Tel +4 021 231 2515

Fax +4 021 231 2550

Web www.rominvent.ro

Adrian Cavescu

Attorney at law

[email protected]

Adrian Cavescu graduated from law school in 1999 and was admitted to practise by the Bucharest Bar Association and the Romanian IP Chamber. His practice covers all aspects of IP, commercial and corporate law, and he has more than 10 years’ experience in these areas.

Before joining Rominvent, he worked for the police IP department, specialising in anti-counterfeiting investigations. His practice focuses on trademarks and industrial designs and deals with a broad range of IP matters, particularly for owners of well-known trademark, such as litigation and enforcement, police and customs seizures, domain name disputes and infringements and counterfeiting issues.