joi, 29 mai 2014

... and point 14 of the "October Instruction", in order to reach the end of these presentations sooner!

Point 14 of the instruction contains the following text:

In the case of an opposition for a trademark application, this will be analysed without being subject to the payment of examination fees for the trademark application, following that the decision taking regarding  the opposition to be done in due time.
All proceedings shall be conducted within legally established time limits, usually within 6 months from the publication of the regular filing, so that the decisions concerning the trademark application to be made expeditiously.

It is true that on this narrow issue, namely the moment for starting examination of the oppositions filed against a trademark application, there are no express legal provisions. But that does not mean that appropriate solutions do not exist. In any case not those presented in the first sentence of point 14 of the instruction, because this solution facilitates fraud in the registration of trademarks and in no way respects the spirit of the trademark law.

It will be easily understood by an example. Suppose there is a registered trademark "PREVENT" for several classes of goods and services. Locally, this trademark enjoys a certain reputation and draws interest not only to consumers, but also to other "entrepreneurs". One of the last files a trademark application for the figurative trademark "PREVENTE" for all the 45 classes in the Nice Classification. The cost of this operation, according to the Service Instruction no 5/2012, which, against the trademark law, eliminates the publication fee as a regular filing condition, is only 36 lei (Romanian currency, equivalent with less than 10 Euro). To be noticed, no publication fee (according with point 10 of the instruction), no examination fee required! This means that the application is already published and therefore entered in a temporary provisional protection, which gives to the applicant almost the same rights as for an owner. “The entrepreneur” has already started to notify the supermarkets where products bearing the trademark "PREVENT" are sold, threatening retailers with action in the court for counterfeiting, which is perfectly possible, according with article 37 of the trademarks law. The simplest way to avoid any problems with the police or judge is to put away the goods with the trademark involved in this trouble. And this moment is the beginning of losing money! For everybody, less “the entrepreneur”! According to the instruction, OSIM will not reject “ex officio” the application at hand because there is neither identity of signs, nor goods and services and the opposition remains the only path for the owner of the earlier trademark to defend himself. Accordingly, he has to pay 4,968 lei (around 1.400 Euro, see OG 41/1998, republished, Appendix 4, section 13), is about 140 times more than "the entrepreneur" paid for creating this situation. And now are intervening the provisions of point 14 of the instruction which required the examiner to consider the opposition without waiting for "the entrepreneur" to pay the examination fee. The result: the holder of the previously registered trademark is losing 4,968 lei (not mentioning the representative expenses) even if the trademark application will be rejected for failure to pay the examination fee. Add also in his account the losses on sale during this whole period. Against a "benevolent proposal" of 3,000 lei for withdrawal of his trademark application or even sale, thus eliminating opposition fee, plus representative expenses, plus losses in sale, what will make the owner of the earlier trademark? This scenario was not invented by me, it happened. A solution for this kind of “applications” and “applicants” would be the request of the examination fee in the moment of filing, solution which were proposed in 2011, but ignored by the management.

The logical solution, normal, in the spirit of the trademarks law is not the one given by the point 14 of the instruction. The law envisages, in opposition proceedings, two sides equal in rights, and these rights must be both VALID, earlier trademark which is opposed and the trademark application. Based on the principle of symmetry, if the opposition can be suspended until the earlier right invoked becomes valid (see article 20(3) of the trademark law), so the same should apply for the trademark application involved in opposition and analysis should not begin unless the examination fee is paid, in which case the trademark application becomes valid as part of the opposition proceedings. Returning to the previous example, if the trademark application was filed in good faith then "the entrepreneur" should pay the examination fee in the amount of 8.316 lei (see O no. 41/1998 , republished , Annex 4, section 3). Perhaps the statement from the registration application form, obligatory by point 17 of the instruction, will make him to do so!

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