On December 13th,
2012, the “World Trademark Review” published the article “Trademark office
violates law by reintroducing examination on relative grounds”. For those
interested persons who have read this article and want to understand more, or
for those who want to be prepared if they intent to apply for a trademark in
Romania, I consider that it is a “must” to be aware of the modifications of the
Romanian Trademarks Law no. 84/1998, republished, by an administrative act
signed by the deputy general director of The Romanian State Office for
Inventions and Trademarks, Mr Alexandru Cristian Strenc, together with the
director of Legal, Trademarks and Design, International Cooperation
Directorate, Mr Liviu Bulgar and the head of Legal Division, Mrs Cornelia
Moraru. This administrative act, namely Service Instruction no. 5, dated October
17th, 2012, which modifies a law given by the Romanian Parliament,
completely changes the approach for the trademark applications examination and raises a huge question mark concerning the validity of all the decision given by the Romanian
State Office for Inventions and Trademarks concerning the trademark
applications examined following the “October Instruction”.
This text, like those that follow, analyses the
Service Instruction no. 5/17.10.2012, on the examination procedure in the Trademarks
/ Geographical Indications Division (hereinafter referred to as “the instruction”
or “instruction”).
The analysis of
the instruction will not focus on logical, grammatical or other similar errors,
which are present, but it will outline the contradictions between the
provisions of this instruction and the regulations in force, currently
governing the protection of trademarks and geographical indications in Romania,
mainly:
- the Law no.
84/1998, republished, (hereinafter referred to as "law" or "trademarks
law"), published in Official Gazette no. 350 of May 27th, 2010;
the full text of the English version of this law can be found at: http://www.osim.ro/index3_files/laws/trademark/law_84.pdf;
- the
implementing regulation, namely the Government Decision no. 1134/2010
(hereinafter " implementing regulation" or “regulation”), published
in Official Gazette no. 809 of December 3rd, 2010; the full text of
the English version of this regulation can be found at:
- the Government Ordinance no. 41/1998, republished,
concerning the fees in the field of industrial property protection and the
conditions for using them, published in Official Gazette no. 959 of November 29th,
2006 (hereinafter "OG 41/1998"); the full text of the English version
of this ordinance can be found at:
It is important to be mentioned from the
beginning that the following analysis is not based on an official English
version of the Service Instruction no 5/2012, simply because it does not
exist. Consequently, the English versions of the provisions cited from the
instruction were translated by the author.
The analysis will not cover the legal provisions
which entitle the Deputy Director General of the Romanian State Office for
Inventions and Trademarks (hereinafter "OSIM") to issue such a
document, given that the article 6, paragraphs 3 of Government Decision no.
573/1998, as amended, refer only to the competence of the Director General of
the OSIM. Any special mandate should have been mentioned in the preamble of
this instruction.
Also, the organizational matters regarding the
Trademarks Division in OSIM contained in the instruction will not be included
in this analysis. They were introduced based on completely different
considerations than those of a competitive management.
* * *
The changing of the Romanian trademarks law, in force from 1998,
occurred in the context of the accession to the European Union, for the
implementation in our national law of the provisions contained in Directive
2008/95/EC and in the Regulation 207/2009 on the Community trade mark. Changing
the trademarks law not only meant relinquishing the ex officio examination of
relative grounds, but also enrolling in a natural evolution, fully compliant
with the European trends regarding acquiring "monopoly" rights that
are born from a trademark registration, as well. This trend is fully confirmed
by the proposed text amending Directive 2008/95/EC. The project published on
the website of the European Commission stated, at page 9, first paragraph
(English version):
“Finally, the ex
officio approach creates legal uncertainty, since offices applying the
ex-officio system raise objections, as far as earlier rights are concerned,
only on the basis of earlier registered rights that have been filed for
identical or similar goods and services. Accordingly, they cannot offer a
guarantee that an application which successfully passes the ex-officio control
will not subsequently be opposed on the basis of a mark which has acquired
reputation in the marketplace and/or on the basis of an earlier well-known mark
that has not been registered. However, this leads to an unacceptable
duplication of procedures which are both time consuming and inefficient.”
Embodying these ideas, the draft amending
Directive 2008/95/EC introduces by the content of Article 41, the following
obligation for Member States National Offices:
“The offices shall limit their examination ex
officio of whether a trade mark application is eligible for registration to the
absence of the absolute grounds for refusal provided for in Article 4.”
With great satisfaction it can be seen that the
current Romanian trademarks law already contains this provision, in fact the
entire modification action was undertaken in order to amend the law in this
respect. More specifically, we are referring to article 22(3)(c) of the
trademarks law, which in essence, complies with the provisions of the draft
amending Directive 2008/95/EC.
All this efforts failed in October 17th,
2012, when by the will of three senior officials of the OSIM, a law given by
Romanian Parliament is modified by a much lower administrative act, i.e. a
service instruction. The main purpose of this administrative act is to
reintroduce ex-officio examination for relative grounds in a very original
manner, making an elementary confusion between distinctiveness of a trademark
and the availability of a
trademark, as you will see further.
In Romania it is known that trademarks law has
many inconsistencies that generated some problems from the beginning, meaning
from the entering into force of the amendments on May 10th, 2012.
These inconsistencies may be the result of a prolonged legislative process
(about 5 years), but in a greater extent they are due to a total lack of
coordination and correlation of changes made into the bill, during the
legislative process, and to the lack of correlation between the modified and
the unmodified provisions of the old trademarks law. We have to bear in mind
that it was a bill meant to modify the old trademarks law and not to issue an
entire new trademarks law. Thus, some provisions of the old law were modified,
others remained unchanged. Especially, because it intended to change the
examination system of trademark applications, the permanent correlation of the
provisions, new ones together with the old ones, would have to be mandatory.
Seeing the results, i.e. the republished law from May 10th, 2010, it
turns out that this goal was not achieved. The fact that changes occurred in
the text of the bill is absolutely normal and cannot be an excuse, this enters
in the logic of the adoption process, but these changes would have been
correlated as to maintain the logic of the legal act as a whole and to achieve
the objective for which it have been adopted. Only by way of example, although
the law has an article for definitions, article 3, this does not contain the
notion of regular filing of the trademark, one of the very important concepts
when examining the application for registration of a trademark, this notion is
used nine times before being defined in paragraph 1 of article 9.
Unfortunately, the instruction does not treat
any of the main problems of the trademarks law in force. Starting with January
2011, there were submitted to the management of OSIM many proposals for
amending the trademark law. Even though these proposals were based on the day
by day experience in the trademark examination according to the provisions of
the new trademarks law - into force from May 10th, 2010 - and
contained solutions for the problems encountered as a result of the
implementation of this new law, they were completely ignored.
As a last
general remark, the instruction does not comply with the principle of
regulation for the future because while it was issued on October 17th,
2012, at point 1, it is stated that its provisions shall apply starting
with August 1st, 2012!!! What is not mentioned in the body of the instruction
is what would happen in case of activities contrary to its provisions,
conducted in the period when the instruction should be respected, but it hasn’t
been issued yet.
* * * * * * *
Because the time
is limited I will come shortly with analyses for all important provisions
contained in the Service Instruction no. 5/2012, already famous, but disastrous!
Sorry, I didn't find other rhyme!
