The evening of January 25th reunited, at the Artmark Galleries, intellectual property professionals, in an attempt to discuss on the change of perspective inside the Romanian Patent and Trade Mark Office (“Romanian PTO”) regarding the ex officio rejection from registration of a trademark, based on the relative grounds provided by Law no.84/1998. The guests who attended the debate were Ruxandra Tirică, Judge at the Bucharest Court of Appeal, the Civil and Intellectual Property Division, Gabriela Milcev, Attorney-at-Law and Partner at Milcev Burbea Intellectual Property and Law Office and Ionuţ Lupşa, Attorney-at-Law and Partner at Lupşa & Associates. The discussion, led by Mr. Bogdan Dumitrache, concentrated on the sudden appearance on the website of Romanian PTO of Disposition no. 5/14.01.2016 that suspends the effects of Instruction no. 5/2012, but also concentrated on its „mysterious” disappearance in only a few days from the publication. The Instruction no. 5/2012 stated internally as an examination rule that Romanian PTO shall verify whether a trademark application is identical or similar with an earlier trademark and to issue a Provisional Refusal Decision, contrary to the provisions of the law, that clearly states that Romanian PTO has the prerogative to analyze only the absolute grounds of refusal. The similarity of two trademarks should be analyzed only in the opposition procedure, at the express notification of the holder of the earlier sign. Despite being disputed in many procedures, (through the responses at the Refusal Decisions, through Appeals in front of the Appeal Commission), but also by adopting a firm attitudes and through official statements, the standing in 2012 hasn’t resonated with any effort until this year.

The problems identified during the debate revolved around the incorrect application of the legal provisions through a faulty interpretation of the law, as well as around it’s harmful consequences consisting in multiple registration rejections. Therefore, there were many situations in which the holder of earlier signs have benefited through Romanian PTO from protection for an unused trademark, holder that in a possible opposition would have stand the obligation to prove genuine use. All the guests invited unanimously agreed that in a situation of similarity with an early trademark, the correct procedure was that Romanian PTO notified the holder of the registered mark and it would be his prerogative whether to pursue the opposition procedure or not. Censorship of this faulty interpretation of law was made, for those who had the financial resources to continue, through the Justice Court which concluded that it was not Romanian PTO’s prerogative to issue and apply an internal act as the instruction against a superior normative act as the law.

The discussions also focused on the solutions of a holder who was faced a Refusal Decision and it still in the appeal period (the appeal is the legal means to respond to Romanian PTO’s  Refusal Decision). Would it be possible to follow the path of an administrative procedure? Article 7 in Law no.554/2004 offers an aggrieved person the possibility to address the issuing authority in order to revoke a harmful act. The provisions are also applicable in case a special law provides the aggrieved party with the possibility to pursue a jurisdictional procedure and this is not pursued. Therefore, despite the possibility to file an Appeal, would it be possible for the applicant to make a prior administrative complaint? The cost would be less burdening. However, should the answer in the administrative procedure not be a favorable one, what is the next step? The administrative Court? The implications could prove disadvantageous for both the judges and the parties involved. The safest way to contest a refusal decision in a registration procedure remains the Appeal at the Appeal Commission at Romanian PTO, even though the official fees may prove prohibitory for some of the applicants. Nonetheless the costs can be claimed before the courts of law, by civil means.

At the end of the debate, solutions have been suggested, but questions still remain: what’s the path to be followed from now on by Romanian PTO? Is this the return to a legal status? What will happen with the costs borne by the applicants who initially were prohibited from registering their trademark and further in the Appeal the trademark was admitted to registration? What will happen with all the applicants who, further to a Refusal Decision from Romanian PTO, abandoned their applications without recovering their costs?