Law 84/1998 on trademarks and geographical indications was completed and amended by Law 112/2020 which entered into force on July 13, 2020.
The new normative act brings many novelties in the trademark registration procedure, such as:
· changes regarding the definition of the signs that may constitute trademarks;
· extension and reclassification of the absolute reasons for refusal / cancellation of the registration of a trademark as detailed in art. 5 of the Trademark Law;
· changes regarding the relative reasons that can be invoked when registering / canceling a trademark registered according to art. 6 of the Trademark Law;
· new requirements regarding the classification of products and services for which trademark protection is requested;
· changes of the terms of the procedural stages related to the trademark registration procedure;
· changes of the opposition procedure;
· amendments and clarifications regarding the trademark revocation and cancellations actions;
One of the most important changes concerns the extend of protection of the national trademarks covering the headings of the Nice Classification.
Under the provisions of the old trademark law when the trademark was registered for the heading of the class it was interpreted that the trademark owner had protection for all goods or services included in that class.
The new law states that the indication of general terms in the class heading is interpreted as including only the products or services covered by the literal meaning of the indication or general term. The relevant legal provisions for the purpose of this information notice are as follows:
Art. 91.
(1) Goods and services for which registration of a trademark is applied for shall be indicated by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators to assess the extent of the protection applied for.
[…]
(3) The use of general terms or general indications contained in the headings of the Nice Classification shall be interpreted as to include all the goods and services covered by the literal meaning of such indication or word.
[…]
Art. 92.
(1) The owners of trademarks registered in relation to the entire heading of a class under the Nice Classification shall be entitled to declare that their intention at the date of filing the application for registration was to claim protection for goods and services which are beyond those covered by the literal meaning of the indications of the respective class heading, provided that the goods and services so indicated are included in the alphabetical list of the respective class under the applicable edition of the Nice Classification at the date of filing the trademark application.
(2) The declaration provided in paragr. (1) shall be filed with the SOIT before September 30, 2020, and shall specify clearly and precisely the goods and services, others than those covered by the literal meaning of the general indications under the class heading, initially intended by the owner. SOIT shall modify the Trademark Register accordingly.
[…]
(4) Trademark registrations for which no declaration is filed within the deadline provided for in paragraph (2) are considered, from the date of expiry of the said deadline, to designate only the goods and services covered by the literal meaning of the indications contained in the respective class heading.
Since no Implementing regulations have yet been published, there were some unclear aspects related to the interpretation of the Office as regards the entitlement of the trademark owners to submit a declaration under article 92. Given this, the Romanian PTO has issued on August 26, 2020, Implementing Instructions addressing the key issues which were unclear, stating that a declaration under article 92 will be admissible:
- for all trademarks filed for registration (either national, or by way of territorial extension of an international registration) before July 12, 2020, having claimed or being granted protection for the entire class heading of at least one class of the Nice Classification and the applicant did not expressly specify that protection was claimed for all the goods or services included in the alphabetical list of the class;
- in case the specification of goods/services includes, besides the class heading other goods/services, provided that the terminology used does not indicate a limitation of protection to only part of the goods/services in the respective class (in other words, the class specification must include the entire class heading, even if already augmented with other specific indications);
- only of the goods/services are indicated clearly and precisely and are selected from the alphabetical list of the relevant edition of the Nice Classification applicable at the date of filing the application.
On the other hand, the Implementing instructions provide that the declaration under article 92 will not be admissible in cases where:
- the class specification does not include the entire class heading;
- detailed specification submitted contains phrases or wordings meant to restrict the class heading (class heading will continue to be incorporated as such in the resulting class specification);
- the wordings used are too general or broad, such as indicating the entire alphabetical list of the class;
- the words used are unclear, unprecise or unspecific;
- the indications used for the added goods/services are already covered by the literal meaning of the general indications of the class heading;
- the indications used are not included in the alphabetical list of the class.
The new law provides a deadline of September 30, 2020 for trademark owners to file a declaration before the Romanian PTO that their intention at the date of filing the trademark application was to request the protection of products or services other than those covered by the literal meaning of the heading of the respective class, indicating clearly and precisely what these are.
