Significant changes regarding the revocation and declaration of invalidity of trademarks15 December 2022
Significant amendments concerning the revocation and declaration of invalidity of trademarks were adopted on 13 December 2022 through the Government Emergency Ordinance no. 169/2022, amending and supplementing Law no. 84/1998 on trademarks and geographical indications (“GEO 169/2022“).
Specifically, GEO 169/2022 provides that applications for revocation of the rights conferred by a trademark and applications for declaration of trademarks’ invalidity may be filed and settled, from now on, by administrative-jurisdictional proceedings before the State Office for Inventions and Trademarks (“OSIM“). This procedure is an alternative to the previous one (e.g., judicial procedure within the Bucharest Tribunal), and applications may also be filed before the Bucharest Tribunal
GEO 169/2022 entered into force on the same day and transposes into national legislation the provisions contained by articles 30 para. (2) and 45 par. (1) of Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks (Recast) (the “Directive 2015/2436”).
In what form should the application be submitted and who handles it?
Applications for revocation and declaration of the invalidity of a trademark must be made in writing, in Romanian, and submitted to the General Registry of OSIM by post, fax, or electronically, under the conditions laid down in the implementing regulation of Law no. 84/1998.
As regards the examination of applications, a separate service, namely the Cancellation-Revocation Service, is set up and organized within OSIM, consisting of a three-member committee, that constitutes a commission.
The procedure for settlement of applications for revocation and the declaration of invalidity of a trademark is conducted in Romanian with the summoning of the parties (i.e., the petitioner and the respondent). Before the commission, natural persons may attend in person, or they may be represented by a representative or a lawyer. Legal parties are represented by a legal representative, legal counsel, lawyer, or trustee. As a rule, the hearing is public, but the commission may order that the hearing be held in secret if the public debate would harm one of the parties or the public order.
How do the parties concerned become aware that a request for revocation or declaration of invalidity of a trademark has been submitted to OSIM?
The president of the commission sets the time limits for the settlement of applications for revocation and declaration of invalidity and orders the summoning of the parties. The summons of the parties and the notifications shall be made by written communication, which may be sent by any means of communication, ensuring the transmission of the document’s text and confirmation of receipt.
The summons procedure is considered lawfully if the party has received the summons containing the abovementioned elements at least five days before the time limit set for the settlement of the application.
The pronouncement of the decision
After the closing of the debates, the commission deliberates in secret on the decision to be taken. In exceptional cases, depending on the complexity of the application, where the commission does not take a decision immediately, its decision may be postponed for a period not exceeding seven days, which may be extended up to two times, each time for not more than seven days. If the decision has been postponed, it may be delivered after the date fixed for that purpose.
The solutions that may be pronounced
In settling the applications for revocation or declaration of a trademark’s invalidity, the commission may pronounce one of the following decisions:
▸ admit the application in whole or in part and order the invalidation of the trademark registration or the revocation of the rights conferred by the trademark, in whole or in part, as the case may be;
▸ reject the application;
▸ take note of the waiving of the application;
▸ take note of the transaction between the parties;
▸ declare the application outdated if it has remained unprocessed for six months for reasons imputable to the applicant.
The motivated decision of the commission is communicated to the parties within three months of the pronouncement and can be contested within 30 days of the communication at the Bucharest Tribunal. The decision of the Bucharest Tribunal settling the contestation is subject only to appeal to the Bucharest Court of Appeal.
According to GEO 169/2022, the provisions concerning the procedure for the settlement of these claims are duly supplemented by the provisions of the Civil Procedure Code.
Further details on the particularities of the procedure for filing and settling applications for revocation and declaration of invalidity of a trademark filed within OSIM can be found in the recently adopted normative act.