Reglamento para la aplicación de la Ley Nº 84/1998 sobre marcas e indicaciones geográficas, Rumania

IMPLEMENTING REGULATIONS TO THE LAW 84/1998 ON TRADEMARKS AND

GEOGRAPHICAL INDICATIONS

CHAPTER I
General Provisions

Article 1 Definitions

(1) Within the meaning of the present regulations the terms and phrases below shall mean as follows:

a) law Law no. 84/1998 on trademarks and geographical indications, as republished;

b) regulations The regulations for Implementing the Law no. 84/1998 on trademarks and geographical indications, as republished;

c) O.S.I.M. the State Office for Inventions and Trademarks;

d) BOPI the Official Industrial Property Bulletin, either on paper or in electronic format, also published on the web page of OSIM;

e) WIPO the World Intellectual Property Organization;

f) WIPO Gazette the official publication of WIPO concerning the internationally registered trademarks;

g) OHIM the Office for Harmonization in the Internal Market;

h) Nice Classification classification instituted by the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, of 15 June 1957, as revised at Stockholm on 14 July 1967 and Geneva on 13 May 1977 and amended on 2 October 1979 and adopted by Romania through the Law no. 3/1998 for Romania’s accession to the agreements instituting an international classification in the field of the industrial property;

i) Vienna Classification classification instituted by the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, done at Vienna on 12 June 1973, and amended on 1 October 1985 and adopted by Romania through the Law no. 3/1998.

j) Common Regulations Implementing Regulations under the Madrid Agreement, ratified by Romania through the Decree no. 1176/1968 and the Protocol relating to that Agreement concerning the international registration of trademarks, done at Madrid on 27 June 1989 and ratified by Romania through the Law no. 5/1998

k) concerned person any person who has a legitimate interest regarding a trademark registration application or a registered trademark and whose interests are likely to be damaged;

n( �/span> trademark use commercializing the goods and/or services to which the trademark refers in an important and effective volume, as well as performing any promotion activities in respect thereof, advertisements and presentation in fairs and exhibitions included: m) extent of use the amount of goods and/or services the trademark is affixed to, commercialized on the territory of Romania or exported;

n) geographical area zone of knowledge of a wellknown trademark on the territory of Romania;

o) degree of knowledge of a wellknown trademark measure in which the relevant public sector has knowledge of the trademark.

(2) The terms and phrases defined in Art. 3 of the Law shall have the same meaning in the present regulations.

Article 2 Application Area of the Law

(1)

The law shall be applicable to all individual, collective or certification trademarks which refer to either goods or services.

(2)

The geographical indications of the goods are protected in Romania in compliance with the provisions of the Law, Community regulations and international conventions to which Romania is a party.

Article 3 Trademark as Sign Capable of Graphic Representation

(1)

Trademarks may consist of any sign capable of being represented graphically, according to Art. 2 of the Law.

(2)

Under Art. 5, paragraph (1), letter m) of the Law, signs of high symbolic value mean religious symbols, emblems or logos belonging to legal entities or charitable foundations, symbols belonging to cultural associations with educational purposes, names of important historical personalities.

(3)

In order to assess whether a trademark contains signs of high symbolic value, particularly a religious symbol, OSIM may request the opinion of the competent authorities, as far as it founds necessary.

(4)

In order to assess whether a wellknown trademark contains armorial bearings, emblems, coats of arms or heraldic signs, other than those considered under Art. 6 ter of the Paris Convention for the protection of industrial property of 20 March 1883, as revised and amended, ratified by Romania through the Decree no. 1177/1968, OSIM shall request the opinion of competent authorities.

Article 4 Acquiring Protection

(1)

Trademark protection shall be acquired in Romania by the registration thereof with OSIM.

(2)

The international protection of trademarks shall be recognized in Romania under the Madrid Agreement and the Protocol relating to that Agreement.

(3)

Protection of Community trademarks shall be recognized in Romania under the Council Regulation (EC) no.207/2009 of 26 February 2009 on the Community trademark.

Article 5 Official Language

The applications for the registration of trademarks and geographical indications, any other applications related to trademarks and geographical indications submitted for registration, or registered, as well as the entire correspondence referring thereto shall be drawn up in Romanian and shall be filed with O.S.I.M.

Article 6 Representation by Professional Representative

(1)

The applicant, owner of a trademark or any person concerned may be represented in the proceedings before O.S.I.M. by a professional representative residing or having the registered office in Romania.

(2)

Where the applicant, the owner of a trademark or the concerned person is not represented by a professional representative and does not have the domicile, or the place of business or any real and effective industrial or commercial establishment on the territory of Romania, shall establish an address for service in Romania and shall communicate the same to OSIM with a view to performing any procedures before OSIM. Change of the address for service by mentioning a new such address or renouncement the address for service may only be carried out after the payment of the prescribed fee for changes in the legal status of the trademark.

(3)

The applicant, the owner of a trademark or the concerned person who does not have either the domicile, or the place of business or any real and effective industrial or commercial establishment on the territory of the European Union or the European Economic Area, shall be compelled to be represented by a professional representative, except for the procedure of filing the application for trademark registration.

(4)

The professional representative shall be appointed by a written communication addressed to O.S.I.M., called power of attorney, which shall contain the name and signature of the trademark applicant, owner or of the concerned person, as the case may be, the appointment thereof after filing the trademark application, either nationally or internationally, being made subject to payment of the prescribed fee.

(5)

The power of attorney may refer to one or more applications for registration or registered trademarks or to all present or future applications for registration or registered trademarks of the person who gave the mandate.

(6)

When a general power of attorney was given according to paragraph (5), there will be enough to communicate to O.S.I.M. one copy thereof, provided that the professional representative should indicate in each subsequent application the power of attorney according to which he acts.

(7)

Any document requested through the professional representative with regard to renunciation to an application for the registration of a trademark, to withdrawal of a trademark, as well as any request related to a transfer of rights in connection with a trademark shall be performed only according to a special mandate which shall expressly mention the document of renunciation, withdrawal or transfer.

(8)

When the applicant for the registration of a trademark is represented by the professional representative, the representative can sign the application on the basis of the power of attorney given by the applicant.

(9)

Any correspondence related to a trademark registration application or to a registered trademark transmitted on behalf of the applicant or owner of the trademark, shall be effectless in the absence of a power of attorney. The Trademark Division of OSIM can grant, upon request, a 30 daytime limit for the submission of the power of attorney for representation.

(10)

The applicant, owner or concerned person can only have one professional representative. If more persons are indicated in the power of attorney for the representation, only the one indicated first is deemed to be a professional representative.

(11)

When there has been ascertained that a professional representative was appointed for an application for trademark registration or for a registered trademark, O.S.I.M. shall enter in the Trademarks Register the mention that the applicant or the owner has a professional representative, as well as the name or denomination and address or registered office of the professional representative.

(12)

Any entries related to the appointment of a professional representative according to paragraph (11) shall be cancelled, provided that cancellation is requested by a written communication signed by the applicant, owner or professional representative.

(13)

Recordal of the professional representative shall be cancelled ex officio by O.S.I.M. when a new professional representative is appointed or when a change of owner was recorded but the new owner did not appoint a professional representative.

(14)

Cancellation of the recordal of the professional representative shall take effect as from the date when O.S.I.M. received the communication requesting the cancellation according to paragraph (12), or from the date when O.S.I.M. cancelled the recordal of the professional representative ex officio, according to paragraph (13), as the case may be.

Article 7 Plurality of Applicants or Owners

(1)

When more persons are the applicants or owners of a trademark, they shall designate one of the applicants or owners for the correspondence with O.S.I.M; otherwise, O.S.I.M. shall have correspondence with the first person indicated in the application for registration of the trademark.

(2)

In case of a plurality of applicants or owners of an application for trademark registration or registered trademark, representation can be made by a single appointed representative.

Article 8 Time Limits

(1)

The period expressed in days shall comprise calendar days and shall not include either the starting day or the day when the time limit expired. The period expressed in months shall expire on the day of the month corresponding to the starting day.

(2)

The period which, starting to run on the 29th, 30th or 31st day of the month will expire in a month which has no such day, shall be deemed to expire on the first day of the subsequent month. The period expiring on a statutory holiday or a day when the Office is not open to the public shall be extended till the end of the subsequent work day.

(3)

The periods shall start to run as from the date of communication of the documents for the procedure, understanding thereby the date when the document issued by O.S.I.M. was received by the applicant, owner, concerned person or the professional representative, as the case may be. This date is confirmed by the stamp of the receiving post office.

(4)

The documents of procedure sent by mail to O.S.I.M. are deemed to be fulfilled in due time if they were submitted to the post office prior to the expiration of the time limit.

(5)

The time limits granted by OSIM upon request by the applicant for a trademark registration or by the person who has made an opposition shall extend the respective time limits for examination, as provided under Art. 22 of the Law.

(6)

Failure to fulfil the acts of procedure within the prescribed time limits shall not entail the sanctions provided for by the law and the present regulations, if the applicant can prove that he was hindered by an event beyond his will and if he fulfils the procedure in a twomonth period after cessation of the cause, without exceeding one year from the date on which the procedure had to be fulfilled.

(7)

The applicant or owner who, beyond his will, was unable to comply with a time limit within the procedures carried out before the office, shall be entitled to reinstatement, provided that he proves that he has taken all due care to fulfill the procedure before OSIM in the prescribed time limits, within two months from the removal of the obstacle to fulfilling the procedure, without exceeding one year from the time limit not complied with.

(8)

Provisions of paragraph (7) shall only be applicable where the noncomplying with the time limit is due to a person part to the procedure before OSIM, not to the representative.

(9)

Provisions of paragraph (7) shall not apply in respect of:

a) the time limit for claiming priority, under Art. 12 of the Law,

b) the time limit for making observations or oppositions,

c) time limit for lodging an appeal before the Board of Appeal.

Article 9 Signature

(1)

Where a document was not signed by the applicant, owner, concerned person or professional representative, the date of submitting the document to O.S.I.M. shall be recognized, provided that the document is subsequently signed within a time limit of one month, at the most.

(2)

The signature of a document sent by facsimile shall be deemed to be valid provided that the original of the document is transmitted to O.S.I.M. within maximum one month from the date of transmitting thereof by facsimile.

(3)

Transmission of documents by electronic means, the filing of trademark application included, shall be made according to the instructions of the Director General of OSIM.

CHAPTER II

Application for the Registration of a Trademark

Article 10 Presentation and Content of the Application

(1)

The application for registration of a trademark shall be drawn up in only one copy using a standardized form.

(2)

The application shall contain the following elements:

a) the express request for the registration of a trademark; b) name and first name or denomination and address or registered office of the applicant;

c) where the applicant is a foreign person, the indication of the state of which the applicant is a national, the indication of the state where the applicant has his residence or the indication of the state wherein the applicant has an establishment within the meaning of Art. 3 of the Paris Convention, as the case may be;

d) where the applicant is a legal entity, the form of constituting the same, as well as the indication of the state whose legislation governs the organic statute thereof;

e) where the applicant has a professional representative, the name or denomination and the address or the registered office thereof;

f) where the priority of an earlier application is claimed according to Art. 10 paragraph 2 of the Law, a declaration of claiming the priority right, with the indication of the state and the date of the earlier filing;

g) where the priority resulting from exhibiting the goods or services in an exhibition is claimed according to Art. 11 paragraph 1 of the Law and the applicant wants to enjoy a temporary protection, a declaration of claiming the exhibition priority, with the indication of the place and name of the exhibition, as well as of the date of goods or services first display in the exhibition;

h) where the applicant claims colour as a distinctive element of the trademark, a declaration to this effect, as well as the indication of the name or code of the claimed colour or colours and for each colour, indication of the main parts of the trademark which include said colour;

i) where the trademark has a special graphics or it is figurative, the description thereof;

j) where the trademark is threedimensional, a declaration to this effect;

k) where the trademark consists in whole or in part of other than Latin characters or other than Arabic or Roman numerals, a transliteration of these characters and numerals;

n( �/span> where the trademark consists in whole or in part of one or several words in another language than Romanian, a translation thereof;

m) indication of the name of goods or services for which the registration of the trademark is requested, grouped according to the Nice Classification, preceded by the number of the class to which they belong;

n) signature of the applicant or of his professional representative, as the case may be.

(3)

The application shall be accompanied by the graphical or photographical reproduction of the trademark in a size of maximum 8/8 cm.

(4)

Where the application contains a declaration indicating that the trademark is threedimensional, the applicant shall attach the graphical or photographical reproduction of the trademark.

(5)

The reproduction supplied under paragraph (4) may consist, upon the applicant's option, in one view or up to three different views of the trademark.

(6)

In case of a reproduction of a threedimensional trademark which does not sufficiently render the details of the trademark, the Trademark Division of O.S.I.M. may ask that a number of up to six different views and a description of this trademark should be supplied.

(7)

Where the application contains a declaration stating that the trademark is a hologram, the applicant shall file a trademark reproduction consisting of a single view of the sign to

render visible the holographic effect as a whole (the hologram itself) or of several views of the hologram, from different angles, upon the applicant’s wish.

(8)

Where the reproduction consisting of a figure or a series of figures is not capable to accurately represent the hologram OSIM may ask that a description of the hologram trademark should be supplied as well by the applicant.

(9)

The proof of payment of the application filing and publication fee shall be presented upon filing the application or within three months of that date and shall be checked up within the substantive examination.

(10)

The documents of payment shall expressly contain the data necessary for the identification of the submitted application.

(11)

The application for the registration of the trademark shall be additionally completed with the following documents, as the case may be:

a) where the applicant wants to enjoy the priority of an earlier application, under Art. 10 paragraph 2 of the Law, a document certifying the date of constituting the first filing of the trademark, issued by other national administration, accompanied by the translation into Romanian, in compliance with the original;

b) where the applicant wants to enjoy an exhibition priority, as a result of displaying the trademark in an officially recognized exhibition, a document attesting that the trademarks are applied to goods and services presented in the exhibition, and mentioning the date of their first display in said exhibition, issued by the organizer of the exhibition and attended by the translation thereof into Romanian;

c) the power of attorney under private signature for the representation of the applicant before O.S.I.M., drawn up in Romanian or attended by the translation thereof in Romanian;

d) the regulations for the use of the collective trademarks;

e) the regulations for the use of the certification trademarks;

f) the document proving the legal exercise of the certification activity or the proof of registration of the certification trademark in the country of origin, as the case may be.

(12) In the application of paragraph (11) letter b), the applicant shall file the certificate of exhibition priority which must contain at least the following data:

a) name of the exhibition taken part in;

b) place and period when the exhibition took place;

c) organizer of the exhibition, particulars for identification thereof and his signature;

d) list of goods and/or services presented to public under the trademark concerned, as well as the moment of their first display in the exhibition;

e) name and signature of the person authorized to certify the authenticity of the document on behalf of the organizer;

f) date of issuance of the certificate.

Article 11 List of Goods and Services

(1)

The list of goods and services for which the protection of the trademark is claimed shall be established in precise terms so that the denomination of goods and services should

permit the classification of goods and services in only one class under the Nice Classification.

(2)

Where necessary, within the preliminary examination procedure, the Trademarks Division of OSIM shall proceed to the classification of the filed list in accordance with the Nice Classification and shall notify the applicant in respect of the so classified list of goods and/or services, as well as of the fee provided by the Law for such procedure.

(3)

Where the list of goods/services filed by the applicant is already classified according to the Nice Classification, OSIM shall verify the classification of the filed list and, if errors are ascertained, shall communicate the correct version to the applicant who must pay the fee corresponding to the so carried out reclassification.

(4)

The goods and services may not be regarded as being similar to each other for the reason that they are classified in the same class and nor may they be considered dissimilar for the reason they are classified in different classes under the Nice Classification.

CHAPTER III

Trademark Registration Procedure

Article 12 Filing the Application for Trademark Registration with OSIM

(1)

The registration of a trademark shall be requested with O.S.I.M. by natural persons or private or public legal entities, either directly or through a professional representative.

(2)

An application for the registration of a trademark may be filed with O.S.I.M.:

a) directly and with acknowledgement of receipt by the General Registry of O.S.I.M;

b) by mail, sent by registered letter with acknowledgement of receipt or by fax;

c) online, by electronic means, using the webpage of OSIM.

(3)

The Application Receiving Bureau shall mark the application with the year, month and day of receiving thereof and shall record the applications in the order in which they have been received. The applications received with O.S.I.M. after the legal working hours, or on the weekly repose days, or the days of statutory holidays shall be recorded on the subsequent working day.

(4)

The Application Receiving Bureau shall immediately transmit the application for trademark registration to the Trademark Division in view of examination.

Article 13 Regular Filing

(1)

The Trademark Division shall examine the application for the registration of a trademark to ascertain whether the legal requirements for constituting the regular filing are fulfilled.

(2)

The date of the regular filing shall be the date of submitting with O.S.I.M. the application for the registration of the trademark, drawn up in Romanian and containing:

a) express request for the registration of a trademark; b) information identifying the applicant or the authorised representative, as the case may be;

c) a list comprising the goods and/ or services for which the registration of the trademark is requested;

d) a sufficiently clear reproduction of the trademark whose registration is applied for;