Significant Changes in the National Trademark Law
On July 12, 2020, the provisions of Law No 112/2020 (“Law 112/2020”) became effective in order to amend and supplement Law No 84/1998 on trademarks and geographical indications following the transposition of Directive (EU) 2015/2.436 of the European Parliament and of the Council of 16 December 2015 on the approximation of the laws of the Member States relating to trademarks.
Extension of the definition of the sign that may constitute the trademark
- The circumstances for recording signs belonging to new categories are created (e.g. sound trademarks, multimedia, holograms);
- The requirement of graphic representation of the sign that has the vocation to be represented in the form of the trademark is eliminated;
- The need is established to clearly and precisely determine the object of protection granted to the trademark owner.
The need to verify the registered trademark portfolio
- In the context of introducing the definition of the Nice International Classification of goods and services, the owners of already registered trademarks may declare that their intention at the time of filing the trademark application was to request the protection of products or services other than those covered by the literal meaning of the title of that class, provided that the goods or services so indicated are included in the alphabetical list of that class in the edition of the Nice Classification in force at the date of filing of the trademark application;
- The affidavit regarding the inclusion in the description of the classes also of those products/services included in the alphabetical list of the titles not covered by the literal meaning of the indications offered by the class title, to which the owner’s intention originally referred, shall be submitted by September 30, 2020 at the latest;
- In the absence of the filing of the affidavit within the mentioned term, it is considered that the trademarks thus registered designate only the goods or services covered by the literal meaning of the indications contained in the title of the respective class.
Extension and clarification of actions in defense of the rights granted by a trademark
- The possibility is introduced for a trademark owner to request the interdiction of the use of an identical / similar sign as a trade name or as part of a trade name;
- Introducing the possibility to request the interdiction of using an identical/similar sign in comparative advertising in a way that contravenes Law No 158/2008 on misleading advertising and comparative advertising;
- Possibility of requesting the interdiction of application of a sign identical/similar with the trademark for the offering, placing on the market or possession of goods for these purposes, as well as the import or export of security or authenticity packaging, labels, elements or devices or any other media on which the trademark may be applied.
Fluidization and clarification of trademark registration steps
- The deadlines for the registration, examination and appeal procedure have been shortened;
- The possibility of filing an appeal against the registration of a trademark without the need to have previously gone through the opposition procedure has been ruled out;
- Communication to the applicant of the remarks made by the interested parties based on the absolute reasons provided by law in order to enable the applicant to make remarks;
- The term of 2 months for the submission of the oppositions to the registration of the trademark by the interested third parties is calculated from the date of publication of the admission of the application;
- Introduction of a term of 2 months from the date of communication of the opposition to the applicant in order for the parties to discuss a potential amicable solution for the opposition, which term may be extended by maximum 3 months, at the joint request of the parties.
Recognition of new means of transfer of a trademark
- Trademark rights may also be transferred by merger, by succession, on the basis of a court decision or by any other means provided by law for the transfer of ownership.
- Any request for renewal of a trademark registration may be made by the trademark owner or by any other person authorized for this purpose by law or under a contract, at least 6 months prior to the expiry date of the registration;
- OSIM will inform the trademark owner about the expiry of the registration, at least 6 months before the expiry date, without the lack of such information triggering the responsibility of the office;
Removal of the five-year deadline for submitting the cancellation request
- An action for annulment may be brought at any time during the period of protection, irrespective of the reason for annulment invoked.
Applicability of Law No 112/2020 in time
- Trademark applications filed until the effective date of the new legal act fall under the law in force at their filing date.