New Trademark Law Introduces Sweeping Amendments To Important Provisions

• Published date: 28 September 2020
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Fross Zelnick Lehrman & Zissu, PC
• Author: Mr Sahil Yadav

Romania substantially amended its trademark legislation via Law 112/2020 which entered into force on July 13, 2020. Amendments to the Implementing Regulations are expected in September 2020. The new law was enacted to implement the EU trademarks Directive 2015/2436 and make it a part of Romanian law by amending and supplementing the older Law 84/1998. The new law introduces a plethora of very important amendments which refresh the somewhat archaic Romanian trademark legislation and brings it in conformity with more contemporary international provisions. A summary of the most important provisions is provided below:

Graphical Representation of Marks No Longer Required

Romanian law previously required that a mark be capable of graphic representation to be eligible for trademark protection Under the new law, a trademark may consist of any sign including importantly, sounds, provided that it is capable of distinguishing the goods or services of the applicant from those of third parties and is represented in a form in which the Trademark Office is clearly able to establish the scope of protection.

Class Headings to Be Interpreted Literally and a New Procedure Introduced to Extend Coverage for Registrations

If an existing registration covers class headings, the new law requires that the class heading be construed literally and not provide the owner with coverage for the entire class. However, the new law also introduces a procedure for owners of registrations which cover class headings to extend protection of the registration to cover additional goods/services based on the Nice Classification. Owners can file a declaration to claim additional goods/services before September 30, 2020.

New Examination Procedures

• The Trademark Office now must examine an application based on absolute grounds within seven days of filing of the application (as opposed to thirty days under the old law).
• After the Trademark Office examines an application on absolute grounds, any third party can file an observation based on absolute grounds within two months from publication of the application.
• The new law also adds a new absolute ground for refusal or invalidity. A mark will not be granted registration if it is similar or identical to a designation of origin and geographical indication, a traditional term for wine, a traditional specialty guarantee (food), or a plant variety.
• If an application is provisionally refused based on lack of distinctiveness, an applicant may now show...