Andreea Bende introduces the new trade mark invalidity and revocation procedures in Romania.

The Romanian Government Ordinance No. 169/2022 adopted in December 2022 introduced several changes to the Romanian Trademarks Law no. 84/1998, including pertaining to the alternative procedure for invalidity and revocation of registered trade marks.

In the previous legislative framework, these procedures could be pursued only before the Romanian Bucharest Court of Law, which had special competence in these matters.

These changes, which finally transpose the provisions of the EU Trade Marks Directive, allow interested parties, starting from January 2023, the alternative of pursuing the invalidity or revocation of national trade marks before the Romanian State Office for Inventions and Trade Marks (the Romanian IPO).  

Key features of the new procedures

Claims brought before the Romanian IPO will be analysed by a committee of experts especially appointed for this task. It will be composed of three members with a legal background of minimum three years and competent in trade mark matters.

According to the law, the Committee’s members should not be also tasked with other trade mark operations within the IPO and their activity should not interfere or overlap with that of the IPO’s Appeals Committee.

According to the law, invalidity and revocation claims must be filed before the IPO in writing, in the Romanian language, either by post, facsimile or using electronic means (i.e. e-mail) and must indicate: a) the applicant and its appointed representative, if applicable, b) the particulars of the contested trade mark(s) and the targeted goods and/or services (if a partial invalidity/revocation is sought), c) the prior rights relied upon, d) the factual and legal arguments, e) the evidence intended to be relied upon and f) the power of attorney (if the claim is filed through a representative). 

The IPO will assume that the claim is directed against all the goods and services under the mark if they are not specifically indicated in the claim.

Claims can be submitted only in Romanian and any evidence annexed needs to be accompanied by a Romanian translation (evidence filed in a foreign language without translations will not be considered by the Committee when reviewing the claim).

Claims must be filed in as many copies as the number of parties involved in the procedure, and all copies annexed thereto need to be certified for conformity.

Claims are preliminary reviewed in a term of five days from filing and applicants will be notified by the Committee in respect of any deficiencies, which would be required to be corrected also in a term offive days. 

Admissible claims are further notified to the respondent(s) (the trade mark owner(s)). They will be granted a 30-day term to file their written point of view. The applicant(s) also have the possibility to file additional observations to the respondents’ arguments, in a term of 10 days from their communication.

Oral stage

The procedures include an oral stage and the parties will be invited to sustain their arguments on the merits during a public hearing scheduled before the Committee. At the hearing, the Committee members have the possibility to address questions to the parties if granted by the presiding member of the Committee.

After hearing the parties’ oral arguments on the merits, the Committee must rule on the case. In special cases, depending on the complexity of the case, the ruling can be postponed for two consecutive terms, each a maximum of seven days. 

Grounds

According to the Romanian Trade Marks Law, trade mark invalidity claims can be pursued on either absolute or relative grounds, similar to those provided for under the EU Trade Mark Regulation.

Revocation claims can be pursued when the contested mark was not genuinely used on the market in the past five years, in respect of the goods/services protected, with no reasonable reasons for non use; if the mark became generic as a consequence of the holder’s action or inaction; or if it became misleading.

A cautious approach

The option to pursue invalidity and revocation claims before the Romanian IPO is generally welcomed by the users of the trade mark system in Romanian, as they expect a more rapid and cost-effective procedure. But so far there is very little practical information about actual cases dealt with by the Romanian IPO.

Therefore, invalidity/revocation applicants continue to exercise caution and to prefer to address their claims to the Bucharest Court.

Andreea Bende is a Partner of Simion & Baciu in Bucharest and a member of the MARQUES European Trade Mark Law and Practice Team.