1. The definition of a trademark and of a geographical indication
2. What trademarks may be registered ?
3. Why must a trademark be registered ?
4. Who may apply for registration of a trademark ?
5. Rights conferred by the registration of a trademark
6. Signs that cannot be registered as trademarks
7. The registration of a trademark
8. Transfer of rights in trademarks
9. Registration of a geographical indication
1. THE DEFINITION OF A TRADEMARK AND OF A GEOGRAPHICAL INDICATION
A trademark is a sign susceptible of graphic representation which serves to distinguish the goods or services of a natural or legal person from those belonging to other persons.
A geographical indication is a designation which serves to identify a good originating in a country, region or locality of a country where a given quality, reputation or any other characteristic may be essentially attributed to that geographical origin.
The right in a trademark or geographical indication is acquired and protected by registration with OSIM under the provisions of the Law no. 84/1998.
2. WHAT TRADEMARKS MAY BE REGISTERED?
One may register as trademarks: words, including personal names, drawings, letters, numbers, figurative elements, three-dimensional forms, especially the form of the goods or their packaging, combinations of colours as well as any combinations of these signs.
The trademarks can be individual, when used by one company, collective or certification marks:
- the collective mark serves to distinguish the goods and services belonging to other persons;
- the certification mark indicates that the goods or services it represents are certified by the trademark owner in respect of the quality, material, manufacturing process or manner of service, accuracy or any other characteristics.
3. WHY MUST A TRADEMARK BE REGISTERED?
The trademark is an essential element of the strategy of companies; it distinguishes between the goods and services of the company and those of the competitors.
For a consumer, the trademark is the most practical means of a quick recognition of the category of goods and services that were recommended to him or which experience induced him to prefer to other goods or services of a similar nature.
For a company, the trademark is the means of conquering and maintaining its customers.
4. WHO MAY APPLY FOR THE REGISTRATION OF A TRADEMARK?
Any natural or legal person may apply for the registration of a trademark in Romania.
5. RIGHTS CONFERRED BY THE REGISTRATION OF A TRADEMARK
The rights of the trademark owner are confirmed by the certificate of registration of the trademark.
The registration of the trademark confers on the owner a right of exclusive use of the trademark for the goods and / or services that were registered, for a period of 10 years from the date of filing as well as the right to prohibit others to use it or to imitate it fraudulently. Upon the request of the trademark owner the registration can be renewed at the end of every period of protection of 10 years.
6. SIGNS THAT CANNOT BE REGISTERED AS TRADEMARKS
The following trademarks are excluded from protection and cannot be registered:
- trademarks deprived of distinctive character;
- trademarks comprising exclusively signs or indications currently used in common language or in fair and constant commercial practice;
- trademarks comprising exclusively signs or indications that may be used in trade in order to designate the species, quality, quantity, destination, value, geographical origin or the time of manufacturing the good or of rendering the service or other characteristics;
- trademarks consisting exclusively of the shape of the good, which is determined by the nature of the good or which is necessary in order to obtain a certain technical result or which gives a substantial value to the good;
- trademarks capable of misleading the public with respect to the geographical origin, quality or nature of the good or service;
- trademarks comprising a geographical indication or consisting in such an indication for goods which do not originate in the territory indicated, if the use of the said indication is of such nature as to mislead the public with respect to the true place origin;
- trademarks consisting in or comprising a geographical indication identifying wines or spirits which do not originate in the place indicated;
- trademarks contrary to morality or public order;
- trademarks which comprise, without the consent of the owner, the image or the name of a person who is well – known in Romania;
- trademarks which comprise, without the authorization of the competent authorities, reproductions or imitations of coats of arms, flags, State emblemes, sigles, official signs and hallmarks for control and waranty, armories, belonging to “the Union States”, ruled by Article 6 ter of the Paris Convention;
- trademarks that comprise, without the authorization of the competent authorities, reproductions or imitations of coats of arms, flags, other emblems, sigles, abbreviations or designations that are ruled by Article 6 ter of the Paris Convention and belong to the international intergovernmental organizations where one or more countries of the Union are members.
A trademark is also refused registration if:
- it is identical to an earlier trademark and the goods or services for which the registration of the trademark was applied for are identical with those for which the earlier trademark was protected;
- it is identical to an earlier trademark and is designed to be applied to goods or services similar to those for which the earlier mark was protected, where there is a risk of confusion of the public;
- it is similar to an earlier trademark and is designed to be applied to certain similar goods or services, if there is a risk of confusion of the public, including the risk of associating it with the earlier trademark;
- it is identical or similar to a trademark which is well – known in Romania for identical or similar goods or services, upon the date of filing the trademark application;
- it is identical or similar to a trademark which is well – known in Romania for goods or services that are different from those for which a trademark is registered, when the use of the registered trademark for these goods or services indicates a connection between them and the owner of the registered trademark, said use running the risk of causing damage to the registered trademark.
Note: The last exceptions may be cancelled and the trademark may be registered with the consent of the owner of the earlier or the well – known trademark.
7. THE REGISTRATION OF A TRADEMARK
The registration of a trademark requires the filing with OSIM of an application written in Romanian on a standard form, comprising:
- for the Romanian applicant: the name and address of the applicant, the telephone and telefacsmile numbers included;
- for the foreign applicant: the name of the country of citizenship, the name of the country of domicile; the name of the country where he has a real and effective industrial or commercial establishment;
- for an applying legal person: the form of establishment and the country the legislation of which served as a legal framework for establishing the said legal person;
- the name and address of the representative, where a representative was employed;
- the declaration claiming the right of priority, stating the country and the first filing, where the priority of a previous application is claimed;
- the declaration claiming the exhibition priority, stating the place and the name of the exhibition as well as the date when the goods or services were displayed in that exhibition;
- the declaration indicating the claimed colour(s) and the main parts of the mark having the claimed colour(s);
- the declaration concerning the three-dimensional form of the mark;
- the transliteration of the characteristics of the trademark (letters or numbers) when different from those used in Romania;
- the translation of the words making up the trademark when they are not Romanian words;
- the list of the goods or services for which the registration was applied for, grouped according to the Nice Classification;
- the signature of the applicant or of his representative, where appropriate.
- The application is attached a graphic representation of the trademark or its photo, sized 6 x 6cm, as follows:
- 5 black-white reproductions of the trademark when no colour is claimed as a distinctive element;
- 5 black-white reproductions of the trademark and 5 reproductions of the coloured trademark, when at least one colour is claimed as a distinctive element.
For three – dimensional trademarks, the application is attached a two – dimensional graphic representation or photo of the trademark.
The proof of the payment of the registration and examination fee shall be filed together with the application or within three months from the date of filing with OSIM.
Where appropriate, the application shall be attached the following documents:
- when the applicant wants to take advantage of the priority of a previous application, a document that certifies the date of the first filing, issued by the national administration, accompanied by its Romanian version if it is drawn up in a language other than Romanian;
- when the applicant wants to take advantage of the exhibition priority, a document that confirms that the trademarks were applied to goods or services displayed in the exhibition and indicates the date on which their first display took place; said document must be issued by the organizer of the exhibition and must be accompanied by its translation into Romanian;
- where the registration was applied for by the representative, the power of attorney signed by him, drawn up in Romanian or its translation into Romanian;
- the rules concerning the use of the collective mark including a list of the persons authorized to use the mark and the conditions in which it may be used;
- the rules concerning the use of the certification mark;
- the document revealing the legal exercise of the certification activity or, where appropriate, the proof of the registration of the certification mark in the country of origin.
Note: The list of goods and services for which the protection of the trademark is applied for must be drawn up in accurate terms in order to make possible the classification of each good or service in only one class of the Nice Classification.
8. TRANSFER OF RIGHTS IN TRADEMARKS
The rights in a registered or renewed individual trademark may be transferred wholly or in part, against payment or free of charge. The collective mark is not transferable.
9. REGISTRATION OF A GEOGRAPHICAL INDICATION
The geographical indications of goods are protected in Romania by registration with OSIM according to the Law no. 84/1998 or to the international conventions where Romania is a party. They may be used only by persons manufacturing or selling the products designated by the registered indications.
Who may apply for the registration of a geographical indication ?
All the associations of producers carrying out a manufacturing activity in that geographical area, for the goods specified in the application.
Formalities for the registration of a geographical indication:
The registration of a geographical indication may be applied for at OSIM directly or by an authorized representative having his domicile or place of business in Romania, and is subject to the payment of legal fees.
OSIM registers the geographical indications and grants the applicant the right to use them provided the Ministry of Food and Agriculture, or, where appropriate, the competent authority from the applicant’s country of origin certifies:
- the geographical indication to be registered;
- the goods that may be sold under this indication;
- the geographical production area;
- the characteristics and the manufacturing standards to be met by the said goods in order to be sold under this indication.
Where the application satisfies the conditions provided by the law, OSIM decides the registration of the geographical indication in the National Register of Geographical Indications and grants the applicant the right to use it.
Geographical indications that may not be registered:
- indications that are generic designations of goods;
- indications capable of misleading the public with respect to the nature, origin, manufacture and quality of the goods;
- indications that are contrary to morality or public order.
Rights conferred by the registration of a geographical indication
The right to use a geographical indication acquired through the registration of the said indication belongs to the members of the association mentioned in the list filed with OSIM.
The term of protection of the geographical indications commences on the date of filing the application with OSIM and is unlimited.
The right to use a geographical indication is granted to the applicant for 10 years; it may be renewed indefinitely if the conditions of acquiring the said right are maintained.
The renewal is subject to the payment of the legal fees.
The persons authorized by OSIM to use a geographical indication for certain goods have the right to use it in the trade of those goods, in the attached documents, advertisements, leaflets; they may specify “registered geographical indication”.
Unauthorized persons are forbidden to use or imitate a geographical indication regardless of indicating the real origin of the goods or of adding words such as “kind”, “type”, “imitation” or similar ones.
The persons authorized by OSIM to use a geographical indication for wines or spirits may prohibit others to use the said indication for wines or spirits which do not originate in the place suggested by the said geographical indication, even in cases where the true origin of the good is mentioned as such or where the geographical indication is translated or accompanied by words such as “of the kind” “of the type” or similar ones.
The Ministry of Food and Agriculture, ex officio or upon request, may check the quality of the goods sold under the said registered indication.
The right to use a geographical indication may not be transferred.