05/03/2015 pm31 2:34pm
Registering a trademark implies an elaborate procedure as well as following a number of stages that are clearly defined by the legislation on trademarks and geographical indications.
Law no. 84/1998 regarding trademarks and geographical indications defines the trademark as follows: “any sign capable of being graphically represented such as: words, including person names, drawings, letters, numerals, figurative elements, three-dimensional shapes and, especially, the shape of goods or of their packaging, colors, color combinations, holograms, sound signals, as well as any combination thereof, provided that such signs are capable of distinguishing the goods and services of one undertaking form those of other undertakings.”
Although according to the above-mentioned definition the requested conditions for registering a trademark may seem rudimentary, this couldn’t be further from the truth. Not every sign possessing the above-mentioned characteristics can be registered as a trademark, as the registration implies meeting a number of criteria and requirements, the most visible proof for this statement being the large number of trademarks rejected for registration.
Without going into specific details regarding the trademark registration procedure and without specifying all of the conditions for trademark admission, it must be said that one of these conditions consists of paying the registration, publication and examination fees regarding the trademark examination.
Where do you register a national trademark in Romania?
On a national level, trademarks are registered through the State Office for Inventions and Trademarks (OSIM). Once registered, a trademark confers exclusive rights to its owner.
Filling a trademark for registration implies paying the specific registration fees. In this respect, art. 22 of Law no. 84/1998 regarding trademarks and geographical indications provides the following: “OSIM substantively examines the trademark registration request and decides either on fully or partially admitting the trademark registration, or on rejecting the trademark registration request, within a deadline of 6 months following said trademarks’ publication, given the registration and examinations fees implied by the trademark application have been paid in accordance with the provisions of the law”.
OSIM distinguishes between the registration, publication and examination fees regarding the trademark application. The importance of this classification has a positive effect on the future owner of the trademark as he is allowed to pay the required fees in installments.
In this respect, while the registration and publication fees regarding the trademark request shall be paid at the submittal of the trademark file, the examination fees can be paid within a 3 months deadline following the submittal of the trademark file. Although this can be considered an advantage for some trademark owners, paying in installments implies a careful monitoring of the deadline within which the examination fee must be paid. Non-payment of the tax within said deadline can lead to the cancellation of the trademark as well as to losing any provisory rights of use that the trademark owner acquired starting from the moment of filling the trademark registration request.
Before learning about the fees charged by the OSIM for a trademark registration, it is important to know which types of trademarks can be registered in our country.
Thus, a distinction must be made between verbal trademarks, combined trademarks with a black and white logo, combined trademarks with a color logo and sound trademarks.
The main criterion for distinguishing between the above-mentioned trademark types consists of their componential elements, as well as of the used colors. A wrong classification may lead to protection limitation, leaving a possibility implying that not all of the relevant aspects concerning your business are protected by the trademark. Conversely, an overprotection is also possible. In this event, elements that may not present any interest are registered, which automatically leads to considerable costs increase.
Thus, verbal trademarks are composed strictly from verbal elements such as words or slogans. In order to register a verbal trademark, the owner shall have to pay a fee of 661 RON. This fee consists of the following sub fees: the registration of the trademark application fee, the fee for publishing the application in the Official Bulletin of Industrial Property and the trademark application examination fee.
On the other hand, if you decide on registering a combined trademark with a black and white or color logo, thus ensuring protection for both verbal and figurative elements of the trademark, the fact that the registration fees vary must be taken into account. Thus, the fees requested by the OSIM for the registration of a combined trademark with a black and white logo amount to 793 RON, while for the registration of a combined trademark with a color logo, the registration fees amount to 1455 RON.
The fees charged by the OSIM for registering a figurative trademark depend on the color of the trademark. The above-mentioned rules regarding combined trademarks apply. As far as sound trademarks are concerned, the fees are identic to the fees applied to the registration of a combined trademark with a black and white logo, 793 RON respectively.
The amounts of these fees are established for only one class of goods or services. For each supplementary class an amount of 221 RON shall have to be paid.
Consequently, another variable influencing the fees requested by the OSIM regards the number of classes of goods and services. Thus, Nice Classification establishes a total number of 45 classes, 34 regarding goods and 11 regarding services. These are presented both in a general form and more detailed form. It is vital to assure a correct classification of the goods and services, in accordance with these classes, as these classes establish the limits of the protection covered by the trademark. Failure to indicate the correct classes when given situations where some goods or services may be simultaneously classified into several classes can lead to serious problems.
How long does the registration procedure take?
The trademark registration procedure lasts about 6 months starting from the submission of the trademark file and in some cases can be reduced to half. In this respect, art. 22 of Law no. 84/1998 provides that: “[…] Under the condition of paying an additional urgency fee, equivalent to double of the amount of the registration and examination fees provided by law, OSIM shall examine and decide on the trademark application within 3 months from the publication of the trademark application”.
If the trademark application meets all of the rigorous requirements provided by the Trademarks and Geographical Indications legislation at the end of the period established for verifying all of the necessary criteria for the trademark registration, OSIM shall submit an Admission Decision to the owner of the trademark, Decision that confers retroactive protection, as the trademark shall be considered to have been registered form the moment of submitting the trademark file.
On the basis of the Admission Decision, the owner shall have to pay the fee for registering the trademark in the National Trademark Register, as well as for submittal of the trademark certificate. At the moment, these fees amount to 221 RON.
Once registered, the trademark confers protection for the owner for a period of 10 years, with the possibility of renewal every 10 years. Renewal is granted upon payment of the renewal fee.
On a Community level, the office responsible for trademarks registration is the Office for Harmonization in the Internal Market. Thus, through a sole registration, the Community Trademark confers protection for its owner in all 28 Member States of the European Union, national registration of the trademark in the Member States no longer being required.
The fees for registering a Community Trademark do not vary depending of the trademark type and are only influenced by the number of protection classes. Thus, no matter what type of trademark, the fees charged by the OHIM amount to 900 EUR for a number of 3 classes. Each supplementary class requires payment of 150 EUR per class.
On the Community level, the fees don’t have to be paid when submitting the trademark file. These fees require payment within a deadline of 30 days from the moment of submitting the trademark file.
Even if a Community Trademarks implies higher expenses at a first glance, if we take into consideration the conferred protection, a Community Trademark provides many financial advantages.
If the states you have an interest with are not members of the European Union or if you don’t wish to obtain protection for your trademark in all 28 states, but only in a few of these states, then the right path to follow would be registering an international trademark.
It is important to mention that registration of the trademark on a national or Community level is required in order to obtain an international registration of said trademark. The national or Community trademark registration shall form the basis from which an expansion of the trademark on an international level shall be performed, in the countries of interest for yourselves.
In terms of fees, is should be noted that they differ according to each Office for each country.