On April 23, 1998 the Law on trademarks and geographical indications was published in "Monitorul Oficial" no. 161, and it will come into force within three months from the date of its publishing in "Monitorul Oficial".
After a long period of time, we have a new law on trademarks. The law no. 28/1967 on trademarks and service marks and the Decision of the Council of Ministers no. 77/1968 included a series of regulations which did not fit any more the present social-economic situation in Romania.
In this context, they felt the necessity to create and regulate a new scope for our legislation, namely the geographical indications.
In order to elaborate this law, they took into account the necessity to afford a national level protection that should be similar to the one in the developed countries.
As a result the new law has a high degree of harmonization with the basic principles that can be deduced from the international agreements and treaties which Romania is or will be part of.
Thus, for the elaboration of this law, they took into account the provisions of the Paris Agreement on the industrial property protection as well as the provisions of some international documents such as: the Madrid Agreement and Protocol on the international registration of trademarks, the TRIPS Agreement on aspects of intellectual property rights related to trade, the Norm of the European Council no. 89/104/21 December 1988, the Regulation no. 40/1994 on the community mark .
According to the new law, they consider that "the mark is susceptible sign of graphic representation meant to distinguish the products or services of an individual or of a legal entity from the ones belonging to other persons". Marks can be distinctive signs, such as: words, including proper names, pictures, letters, figures, figurative elements, three-dimensional forms, including the shape of product or of its packaging, combinations of colors, as well as any other combination of the above-mentioned signs".
Beside the individual marks, the new law, unlike the former law, treats the notorious mark, the collective mark, the certification mark and the geographical indication distinctly.
Therefore, article 3, letter c. of the Law no. 84/1998 says that "the notorious mark is the mark widely known in Romania at the date of handing in of the application for the registration of a mark or at the date of priority asked for in the application; in order to establish whether a mark is widely known, the notoriety of the mark will be taken into consideration within the segment of the public aimed at for the product or services to whom the respective mark applies for, without the necessity to register or use the mark in Romania".
Article 20 says that the examination of the reasons why a notorious mark is refused will take into consideration the following :
a) the degree of initial or acquired distinctiveness of the notorious mark in Romania;
b) the duration and the area of utilization of the notorious mark in Romania concerning the products and services for which a mark is applied for registration;
c) the duration and area of advertising for the notorious mark in Romania;
d) the geographical area of utilization of the notorious mark in Romania;
e) the degree of information about the notorious mark on the Romanian market, which concerns the segment of the public that is addressed to;
f) the existence of identical or similar marks for identical or similar products or services, belonging to some other person than the one claiming that his/her mark is notorious".
Moreover, for the examination of the reasons for refusal "The State Patent Office can ask the public authorities and legal entities of private right for documents in order to establish the notoriety of the mark in Romania".
A novelty in the reasons of refusals of the notorious mark, beside the reasons mentioned in article 6, letter d, "is identical or similar to a notorious mark in Romania for identical or similar products or services". [QQ]
In article 6, letter e, there is a new regulation, namely a mark is refused at the moment of its registration if "it is identical or similar to a notorious mark in Romania for different products or services from the ones the mark is referred to and whose registration is requested and if, by its unjustified use, one could take advantage of the distinctive character or the frame of the notorious mark or this use might cause damages to the owner of the notorious mark".
According to article 3, letter d, "a collective mark is the mark intended to make the distinction between the products or services belonging to the members of an association and the products or services belonging to some other persons".
In chapter IX, art.51-56 of the new law, aspects related to the collective mark are thoroughly treated. Thus, art.51 stipulates : "The associations of manufacturers, producers, traders, services suppliers can apply for the registration of collective marks with the State Patent Office.
The applicant for the registration of a collective mark shall file, together with the application for registration or within 3 months at the latest from the date of the notification by the State Patent Office, the regulations of the utilization of the collective mark.
In the regulations of the utilization of the collective mark the applicant of the request for registration of the mark shall specify the persons authorized to use the collective mark, the conditions to be met in order to become a member of the association, the conditions for the utilization of the mark, the reason why its utilization can be forbidden to a member of the association, as well as the sanctions which can be applied by the association.
The regulations of the utilization of the collective mark can stipulate that the collective mark cannot be transmitted by the owner without the agreement of all members of the association".
Art.53 stipulates that "the owner of the collective mark shall inform the State Patent Office of any modification in the regulations of utilization".
Art. 54 and 55 stipulate the conditions in which any interested person can ask the Court of Bucharest, any time in the period of protection of the collective mark, the withdrawal of the rights conferred by a collective mark to its owner.
Art.3, letter e, says that "the certification mark is the mark which indicates that the products or services for which it is used are certified by the owner of the mark concerning the quality, the material, the way of manufacturing of products or of supplying of services, the precision of any other characteristics".
Chapter X of the new law dedicates art. 57-64 exclusively to the certification marks.
Thus, art. 57 says: "The certification marks can be registered with the State Patent Office by the legal entities legally authorized to wield control of the products or services as regards the elements stipulated in art.3, letter e.
The legal entities that manufacture, import or sell products or supply services, other than the ones of control in the quality scope cannot ask for the registration of a certification mark".
Art. 58 stipulates that "the applicant for the registration of a certification mark shall file, together with the request for registration or within 3 months at the latest from the date of notification by the State Patent Office:
a) the regulations of utilization of the certification mark;
b) the authorization or the document which proves the legal carrying out of the certifying activity or, if the case may be, the proof of the registration of the certification mark in the country where he/she is born.
The regulations will specify the persons authorized to use the mark, the elements and the characteristics to be certified by means of the mark, the way the authority assigned for certification has to check these characteristics and survey the utilization of the mark, the fees to be paid for the utilization of the mark, the procedures to regulate conflicts.
Any individual or legal entity, products provider or services supplier, can be authorized to use the certification mark on condition that they comply with the provisions of the regulations of utilization of the certification mark.
The owner of the certification mark shall authorize the persons who have the right to use the mark for the products or services that have the common characteristics, guaranteed through the regulations of utilization of the mark".
Art. 59, 60, 61 specify the reasons for rejection, the persons who can oppose to the registration of a certification mark at the State Patent Office, and the conditions in which any interested person can ask the Court of Bucharest for the cancellation of the registration of the certification mark.
Art. 62 of the new law clearly stipulates that "the rights regarding the certification mark cannot be transferred by the legal entity, the owner of the mark.
The transfer of the right on the certification mark is established by Government decision". This is essential difference as compared to the conditions of the other categories of marks.
The new law dedicated a whole chapter (Chapter XII) to the geographical indications.
Thus, art. 67 stipulates that "the geographical indications of the products are protected in Romania by their registration with the State Patent Office according to the current law or to the international agreements Romania is part of, and can be used only by persons who produce or sell products these indications have been registered for".
Art. 68 indicates who has the right to ask for this : "The associations of producers carrying out a production activity in the geographical area have the right to ask the State Patent Office for the registration of a geographical indication for the products specified in the application".
Art. 69 stipulates that "the State Patent Office registers the geographical indications and grants the applicant the right of utilization after the Ministry of Agriculture and Food or, the assigned authority in the country the applicant is born, certifies :
- a) the geographical indications of the product, which is to be registered;
- b) the products which can be sold according to the indications;
- c) the production geographical area;
- d) the characteristics and the achievement conditions products have to meet so that they could be sold according to the indications".
If the conditions stipulated by the law are met, the State Patent Office registers the geographical indications and grants the applicant the right of utilization of these indications (art. 71, 72, 73).
The protection duration of the geographical indications is not limited, and the right of its utilization by the applicant is granted for 10 years and there is the possibility of a non-limited renewal (if the conditions in which this right was acquired are still the same) - art.74.
According to art. 78 "the right of utilization of a geographical indication cannot be subject to any transfer".
The law stipulates that, if the conditions of quality and of the specific characteristics of products in the area the geographical indication refers to, the Ministry of Agriculture and Food or any other interested person can ask the Court of Bucharest to withdraw the right of the person authorized by the State Patent Office to use the registered geographical indication (art. 79).
A new aspect is that Law no. 84/1998 establishes the compulsory character of the utilization of the registered mark, and the withdrawal of the rights of the owner when the mark, with no justified reasons, was not used effectively within Romania in 5 years (uninterrupted period) for the products and services this trademark has been registered for (art. 45).
The law also establishes an exceptional situation in which, although the mark has not been used for an uninterrupted period of 5 years, the owner still cannot be withdrawn his rights; it is the case in which the utilization has started again after the term of 5 years expired and this start took place more than 3 months the action in court for the request for the withdrawal.
The principle of utilization of the mark does not apply to the notorious marks as results from the definition of this category of marks in art. 3, letter c of the law.
These are few aspects the new law on trademarks approach.
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