26/02/2015 pm28 8:19pm
How to know if someone has filed for a trademark registration with the OSIM that infringes our rights? Can we do something about it as to oppose the registration?
Given the fact that the law provides the possibility of filing an opposition, the answer is yes.
In order to register a national trademark with the OSIM, a number of stages have to be completed: filling the request for registration, a formal examination of the trademark, a substantive examination of the trademark, the publication of the trademark in the Official Bulletin of Industrial Property, filling of the opposition, the communication of the opposition to the applicant, possible correspondences with the parties, examination of the opposition, the decision of the Commission, communication of the decision, registration of the trademark/rejection of the trademark.
Romanian law defines the opposition as an administrative means (“administrative” appeal) granted to third-parties (interested parties) in order for them to oppose prior acquired rights against the registration of a trademark, if they consider that said registration may bring an infringement against their own personal rights. This administrative appeal may be used following the publication of the infringing trademark, within a 3 months deadline. Thus, the Romanian law on trademarks and geographical indications allows interested parties to file a justified opposition against the registration of trademarks that may infringe their prior acquired rights, within a 3 months deadline from the publication of such a trademark in the Official Bulletin of Industrial Property.
According to the law, an interested party can be the owner of a previously registered trademark or any other person who considers that his image rights or surname rights are infringed, as well as owners of geographical indications protected in Romania, owners of registration certificates regarding industrial designs and models, authors of artistic, literary and other such creations, as well as owners of any other prior industrial property rights that consider that the registration of a certain trademark infringes their previously acquired rights.
The opposition must be filed in writing and requires the payment of a fee. The State Office for Inventions and Trademarks shall communicate the opposition to the trademark applicant, who shall benefit from a 3 month deadline starting from the above-mentioned communication in order to present his point of view regarding the opposition.
Thus, the opposition procedure takes place strictly in writing, as the parties must submit all of their defenses in such a manner, through the only documents allowed by law (the Opposition and the Statement of Defense respectively). The Statement of Defense shall not be submitted to the opponent, so he will not be able to provide any further supplementary arguments.
Oppositions are settled by the Opposition Examination Commission, which is part of the Trademark Department of the State Office for Inventions and Trademarks. This Commission consists of three specialists, one of them being the examiner who has written the trademark examination report. Acting in bad faith when registering a trademark may only be invoked in court proceedings, as the Opposition Examination Commission doesn’t have any legal competence in this regard. As an exception to this rule, the Opposition Examination Commission has the necessary legal competence to settle oppositions filed by the owner of a trademark, when the registration of said trademark has been requested by the owner’s representative (Industrial Property Attorney) in his own name and without the owner’s consent.
The Decision issued by the Opposition Examination Commission can be appealed within a 3 months deadline from its communication.
The Appeal against the Decision issued by Trademark Department following the Opposition procedure requires the payment of other fees and the Appeal shall be settled by the Reexamination Commission.
As opposed to the opposition procedure, the appeal procedure is a public procedure, open to anybody’s participation, and even more important, open to the parties’ oral arguments.
Decretory decisions such as those which modify the protection of the trademark, those regarding the rejection of a trademark registration or those which generate the limitation of goods or services for which the trademark is registered shall be published in the Official Bulletin of Industrial Property.
Naturally, these decisions can be contested, but only in front of a court of law, the Bucharest Tribunal in this particular case, through an appeal against the Decision of the Reexamination Commission.
In conclusion, trademark owners should read the Official Bulletin of Industrial Property on a monthly basis, in order to be aware of any persons’ attempt of registering trademarks similar to their legally owned ones, or of any attempt of industrial property rights breach, in order for them to timely fill oppositions.
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