The Harmonisation Directive contains two types of
provisions: a first group that should be implemented by member
states of the EU by mid-January 2019 and a second group that
should be implemented by member states of the EU by mid-January
This is an opportunity for member states to amend their
trade mark laws beyond the mandatory amendments set by the
In Romania, for the first time ever, key stakeholders are
actively participating in the amendment process of the law
connected to industrial property.
The Romanian Patent Attorney Chamber (CNCPIR) was the
initiator of the dialogue between various interested parties
when, in January 2018 pressure was put on the Romanian Patent
Office to start discussing the draft of the amendments prepared
by the Patent Office. Between January 2018 and the beginning of
April 2018, the working group met twice and various informal
emails were exchanged. A public presentation of the draft took
place during a conference.
Procedures for revocation and invalidity
According to the Harmonisation Directive, member states
should implement necessary steps so that the procedure for
revocation or declaration of invalidity is administrative
rather than judicial until mid-January 2023. The rationale for
such change is that administrative proceedings are cheaper and
shorter than judicial proceedings.
In Romania, under current law, both invalidity and
revocation are judicial proceedings, taking place before the
Municipal Court of Bucharest as a first instance court.
Changing the type of proceedings from judicial to
administrative is not an easy task for various reasons:
- Although considered administrative, the
steps of the procedures for revocation and invalidity will
continue to be very similar to the court ones involving
lodging of the claim, summoning the parties, organisation of
the hearings and taking of the decision. The code of civil
procedure shall continue to be applicable in addition to the
special provisions set by trade mark law. The new law and its
corresponding regulations must take into account this major
- The Patent Office will require trained
people and additional space for hosting the proceedings,
- The transitory provisions must be
carefully established, taking into account the complexity of
the cases and the links between various cases.
For these reasons, it is better to postpone as much as
possible the entry into force of the transference of the
proceedings from the court to the Patent Office for invalidity
Reimbursement of trial costs
Under present law, there are no provisions for reimbursement
of trial costs for opposition and appeal proceedings. When it
comes to revocation and invalidity, it is up to the claimant to
request reimbursement or not and, if he does request it, it is
up to the court to grant it or not. It is not commonplace to
request reimbursement of trial costs for oppositions and
The proposals for the new law deal with the possibility of
requesting such reimbursement for all types of procedures:
opposition, revocation and invalidity. This should limit, in
theory, the number of procedures that abuse the system.
Currently there are two diverging opinions:
- Some practitioners are of the opinion that
there should be a ceiling at least for the costs of
opposition procedures, just like in the opposition
proceedings before the EUIPO, and this ceiling can be updated
regularly. This would enable both parties to foresee costs
and would prevent abuses.
- Other practitioners argue that sometimes
opposition cases can be more difficult than revocation and
invalidity cases, thus the winner should be entitled to
obtain more costs than those dictated by a ceiling. They are
of the opinion that the body in charge of ruling the case
should decide on the amount to be reimbursed, thus no ceiling
- The officers of the Patent Office are, in
principle, in favour of not establishing a ceiling;
Simplification of the procedure
Currently the procedure from application to registration
contains many hurdles that result from the application of the
law regarding fees.
The law relating to fees offers the possibility of paying
the examination fee at a later date than the date of filing,
with the option of postponing date of payment. Currently, in
many cases, the application is published, oppositions are
lodged, but the applicant does not pay the examination fee and
the mark is withdrawn. However, the Patent Office has
significant delays in notifying the opponent that the
opposition no longer has an object.
Trade mark attorneys propose grouping all the fees
related to the application into one single fee, payable
at the application date with one grace period of one
month and with no possibility of deferring the payment
beyond this date
Yet another hurdle results from the absence of any
punishment for the failure to pay the registration fee. A
normal registration procedure should end with the applicant
paying the registration fee and the certificate being issued.
The date from which the grace period for use starts is
calculated from the moment when registration formalities are
finished and the registration fee paid. In the absence of
payment of the registration fee, the registration procedure is
not finished so it is difficult to calculate the grace period.
This gives rise to contradictory interpretations in court
decisions. On the other hand, the mark is in force and can be
enforced, even if the registration fee is not paid.
Trade mark attorneys propose grouping all the fees related
to the application into one single fee, payable at the
application date with one grace period of one month and with no
possibility of deferring the payment beyond this date. This
would require modifying the law regarding fees, possibly not
regarding amounts, but with respect to the deadlines for
Practitioners are in favour of granting a short term to the
applicant for payment of the registration fee. In the absence
of the fee, the mark should be deemed withdrawn. This would
also apply as a transitory provision for all marks registered
before the entry into force of the new law when registration
fees are not paid by the applicant.
By tradition, opponents do not enter into many discussions
with applicants and the case is decided by the Patent Office.
Of course, some foreign opponents and applicants who have a
culture of entering into negotiations with each other for the
purpose of an amicable settlement of the opposition, do
initiate such proceedings, but they do not constitute the
New law will introduce a cooling-off period for opposition
proceedings. Practitioners hope to educate Romanian companies
to use this alternative to the administrative procedure.
Will the new law really work?
In my opinion, the unprecedented cooperation between
stakeholders will lead to a law closer to the aims of the
Harmonization Directive which are to increase legal certainty
and stability (Recital 36).
However, I have some doubts about the new law that are
related to the wording of the Harmonization Directive. Below is
a short explanation of the doubts.
The Harmonization Directive is to be implemented into
national law, which means that, in practice, in many cases the
states will simply translate its provisions and include them in
national trade mark laws. Romania is no exception to this
My doubts relate to the obvious contradiction between the
principle of do-it-yourself when it comes to protection of
trade marks and the complicated wording of the directive. There
is a tendency at the level of national offices of the EU and at
the level of the EUIPO to promote the idea that applicants and
holders have a sufficient degree of knowledge to manage the
process of application themselves and do not need to spend time
and money looking for a specialised attorney.
The directive contains too many articles where the phrase is
drafted with the verb in the negative. This is combined with
the use of the conditional –would or could- which
makes it very difficult to understand the content.
Let us take a look at some examples:
Recital 30. In order to ensure legal certainty and safeguard
legitimately acquired trade mark rights, it is appropriate and
necessary to provide that, without prejudice to the principle
that the later trade mark cannot be enforced against the
earlier trade mark, proprietors of earlier trade marks should
not be entitled to obtain refusal or invalidation or to oppose
the use of a later trade mark if the later trade mark was
acquired at a time when the earlier trade mark was liable to be
declared invalid or revoked, for example because it had not yet
acquired distinctiveness through use, or if the earlier trade
mark could not be enforced against the later trade mark because
the necessary conditions were not applicable, for example when
the earlier mark had not yet obtained a reputation.
Let us try to understand the idea expressed:
The recital refers to a guiding rule that, in certain
situations proprietors of earlier trade marks should not be
entitled to take action against the later trade mark. At this
stage, matters are clear. What are the particular situations?
The answer is if the later trade mark was acquired at a time
when the earlier trade mark was liable to be declared invalid
or revoked. The phrase "was liable to" makes reference to a
potential action in the past where a potential competent
authority (the Patent Office or the court depending on the
jurisdiction) delivered a potential final decision invalidating
or revoking the earlier mark. For an experienced practitioner,
it is clear that not all invalidation or revocation claims
directed against one mark are successful. All countries have
examples of different decisions given in very similar
situations. Therefore how can one be 100% sure, say in the year
2019 when the directive is already transposed into national
legislation if the earlier trade mark was indeed liable to be
declared invalid or revoked in the past?
Now comes the second source of uncertainty: when in the
past? The directive says "at a time when the earlier trade mark
was liable to be declared." The word "time" is not defined in
the directive, nor can it be precisely defined. Ironically an
article that aims to bring more certainty is littered with
Article 18(1) In infringement proceedings,
the proprietor of a trade mark shall not be entitled to
prohibit the use of a later registered mark where that later
trade mark would not be declared invalid pursuant to Article 8,
Article 9(1) or (2) or Article 46(3).
Article 18(2) In infringement proceedings,
the proprietor of a trade mark shall not be entitled to
prohibit the use of a later registered EU trade mark where that
later trade mark would not be declared invalid pursuant to
Article 53(1), (3) or (4), 54(1) or (2) or 57(2) of Regulation
(EC) No 207/2009.
Article 8 An application for a declaration
of invalidity on the basis of an earlier trade mark shall not
succeed at the date of application for invalidation if it would
not have been successful at the filing date or the priority
date of the later trade mark for any of the following
Example 2 is far from being clearer. The articles quoted
above refer to a potential invalidation decision in the past
relating to the later trade mark for reasons described in other
How can one be sure that the later trade mark would not be
declared invalid? How can one be sure that an application for
invalidation would not have been successful at the filing date
or the priority date of the later trade mark?
To conclude, in my opinion articles of this type, when
transposed into national legislation, will probably create many
As a closing remark, a change is never wholly positive or
wholly negative. We should be grateful for the positive changes
at the same time as taking measures to adapt to the negative
||Raluca Vasilescu is a
patent and trade mark attorney at Cabinet M Oproiu, which
she joined in 1996; she qualified as a European patent
attorney in 2003. She is the author of the Romanian
chapter in the Vrins/Schneider book "Enforcement of
Intellectual Property Rights through Border Measures"
published by Oxford University Press in 2012 and a
contributor to Haselblatt book of commentaries on the EU
Trade Mark Regulation published by C H Beck Hart Nomos in