National Trademarks

A trademark is a sign susceptible of graphical representation serving to differentiate the products or the services of a natural person or legal entity from those of other persons; distinctive signs, as: words, including names of persons, drawings, letters, ciphers, figurative elements, tri-dimensional signs, and, in particular, the shape of the manufacturer or its package, color combinations, as well as any other combination of these signs, may be considered trademark.

The legal requirements stated in Law no.84/1998 regarding Trademarks and Geographical Indications are:

1. Publication

If after the examination of the application the requirements for the trademark registration are met, the State Office for Inventions and Trademarks decides the registration of the trademark and its publication in the Official Bulletin of Industrial Property. The trademark shall be published in 2 month period since the date of the trademark registration decision.

2. Opposition

In a 3 month period since the date of the publication, the owner of a previous trademark or of a notorious trademark as well as the owner of a previous right concerning the image or the patronymic name, or of a protected geographical indication, design or a protected industrial design or any other protected industrial property right or of a copyright as well as any other interested person, may file an opposition action to the State Office for Inventions and TradeMarks.

3. Appel

The decision regarding the registration of a trademark of the State Office for Inventions and TradeMarks may be contested by the applicant or by the owner of the mark, within three months of their notification, on payment of the prescribed legal fee.

The decisions of the State Office for Inventions and TradeMarks concerning the registration of cessions or licensing in the National TradeMark Register may be contested by any interested person within three months of their notification or of their publication.

4. Registration

Law no. 84/1998 states that when the decisions of the trademark registration have become final, the trademark is registered in the National Register of TradeMarks and the State Office for Inventions and TradeMarks issues to the owner the certificate of registration of the trademark, once the applicant has paid the legal fee.

5. Limits of a trademark

The owner of the trademark can not ask a third party not to use in his commercial activity:
a). the name/designation and the address/premises of the owner;
b). indications referring to the species, quality, destination, value, geographical origin, the period of manufacturing of the product or the period of performing the service under the trademark, as well as to any other characteristics;
c). the trademark, if this is necessary in order to indicate the destination of the product or of the service, namely for spare parts or accessories;

6. Dillution of a trademark

Law 84/1998, article 49, stipulates that the holder of a previous trademark, who deliberately tolerated for an uninterrupted period of 5 years the use of a trademark subsequently recorded, cannot request the annulment nor withstand to the use of the subsequent trademark. This is the case only if such a subsequent trademark was requested mala fide.

7. Cancellation

A registered trademark can be canceled if, within a continuous period of five years, the mark has not been put to genuine use on the territory of Romania in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.

Services:

Search analysis regarding the availability of a trademark for registration;
Drafting and filing the necessary documentation for the registration of the trademark in Romania;
Drafting and filing the reply to a possible refusal from The State Office for Inventions and TradeMarks;
Drafting the reply to the oppositions of third parties regarding the registration of the trademark in Romania;
Drafting, filing and susteining the appeal against the decision of the The Romanian State Office for Inventions and TradeMarks;
Drafting and filing the oppositions against the registration of similar trademarks;
Drafting the necessary documentation for acquiring consent from third parties;
Drafting the necessary documentation for renewal of a trademark;
Specific actions in order to combat and prevent of counterfeiting;
Providing legal advice for the applicant regarding the proceedings before The Romanian State Office for Inventions and Trademarks;
Drafting and negotiating cession or license contracts;
Search analysis for identical or similar trademarks that infrige our clients' rights;
Legal advice and representation for cancellation of trademarks;
Elaborating opposition regarding the registration of trademarks in Romania;
Legal representation in Court for the cancellation trademark registration certificate;
Legal representation before legal instances and criminal investigation authorities for counterfeit and unfair competition;
Juridical and extrajuridical appraisement;
Pre and post registration analysis regarding raising profits through trademark policies.