It is an infringement to: reproduce, imitate, use(including sell or offer for sale), affix, modify a registered mark.
Third parties shall be prohibited from using in the course of trade, without the consent of the proprietor of the Trademark:
- any sign that is identical with the Trademark in relation to goods or services which are identical with those for which the Trademark is protected.
- any sign where, because of its identity with, or similarity to, the Trademark and the identity or similarity of the goods or services covered by the Trademark and the sign, there exists a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the Trademark;
- any sign that is identical with or similar to the Trademark in relation to goods or services which are not similar to those for which the Trademark is protected; where the said Trademark has acquired a renown in Romania and where the use of the sign - use based on no well-founded reasons - would take advantage of the distinctive character of the mark or of the fame of the mark or the use of the sign would produce damages to the owner of the mark.
The applicant of a Trademark may prohibit third parties from using his Trademark in the way described above provided that the Trademark has been published.
Any person who undertakes such infringing actions may be sued by the proprietor of the published Trademark, pursuant to the Civil Law. The Decision of the Court regarding monetary compensation for damages is effective only after the Trademark is registered.
The proprietor of a registered Trademark is not entitled to prohibit the third parties of actions of holding, offering for sale, putting on the market of the goods bearing his mark, where, prior to registering the mark, the goods were put on the market by the proprietor or with his consent.
THE PROCEDURE IN CIVIL COURTS
A) PARTIES IN LITIGATION
The plaintiff can be the registered proprietor of the trademark or holder or his licensee.
The defendant is the person who is responsible for the infringing actions. The defendant may be either a natural person or a legal entity. If the defendant is a legal entity it might be advisable to include in the complaint as second defendant the responsible manager, in order to prevent him bypassing a judgement against the legal entity by continuing the infringing actions in his own name.
The defendant can be: the underlying company, the retailer and/or the importer/or the entity from which the product originates.
B) WARNING LETTER
The Law does not require the sending of a warning letter before the filing of a complaint. However, it might be useful to send a warning letter if there is a realistic chance that the infringer would comply with the request or that the infringer would reveal in his response details of facts and/or arguments which it might be useful to know before starting litigation.
In an action in the Court for infringement, the Trade Mark holder has available the following civil remedies:
- Injunction to cease manufacturing
- destruction of the infringing products;
- publication of the decision in the newspapers
- part of legal costs.
The licensee of a trademark whose right have been recorded with the Patent Office can also claim damages for his own prejudice.
In proceedings in the Court for infringement of a Trademark the plaintiff may request the Court to order a provisional injunction on infringing activities and the provisional seizure or withdrawal from the market of the goods concerned. Exceptionally, the provisional injunctions may be requested before the proceedings have been scheduled . An appeal entered against a decision to order provisional injunctions have not suspensive effect.
D) REQUIREMENTS FOR PRELIMINARY INJUNCTIONS
The trademark holder may apply for a preliminary injunction from the Municipal Court of Bucharest. If an injunction is issued, a subsequent action on the merits of the case to confirm interlocutory injunction shall be instituted. During the subsequent procedure on the merits of the case the plaintiff may claim compensation from the use of the trademark and compensation for any and all damage that the infringer's actions may have caused, provided such actions were either intentional or negligent.
Two requirements govern the grant of preliminary injunctions:
- the plaintiff has to present satisfactory proof (not full proof) of the infringement of a valid properly right;
- the case must be urgent and timely and the restraint order has to be necessary and appropriate to save the plaintiff from unnecessary disadvantages.
Basically, the preliminary injunction procedure is independent of the full trial. It is commenced by filing a brief with a motion to issue a restraint order. This brief has to contain a full statement of facts and must be submitted to the Court together with all pieces of evidence.
If the case is simple and clear-cut the Court will normally issue an "order injunction" within one week.
E) DAMAGES OR ACCOUNT OF PROFITS
The trademark holder may claim financial compensation from the infringer either as compensation for his loss or by the infringer accounting for his profit.
The assessment of damages or account of profits is made either by the liability trial or by means of a further full action called "inquiry into damages".
F) THE BURDEN OF PROOF
The burden of proof lies on the plaintiff.
NOTE:. THIS ARTICLE IS WRITTEN BY MRS. MARGARETA OPROIU WITH THE PURPOSE OF INFORMATION ONLY AND CAN NOT BE CONSIDERED AS A PROFESSIONAL CONSULTATION. FOR FURTHER INFORMATION PLEASE CONTACT US.