luni, 26 mai 2014

I continue to present you the points 9, 10 and 11 of the "October Instruction".

Point 9 of the instruction contains the following provisions:

In accordance with Article 13 of the implementing regulation, for constituting of the regular filing, the Preliminary Examination Bureau examines the trademarks applications submitted by the national route.
In the preliminary examination procedure, the examiner checks if the object of the trademark application is consistent with the meaning of Article 2 in the trademarks law, namely whether the condition that “the sign which constitutes the trademark  to allow distinguishing the goods or services of one enterprise from those of other enterprises" as an essential function of the trademark.
This checking is made in the Preliminary Examination Bureau, using the identity criteria (not by truncated query) for identical or similar products.
This checking is made in the National Registry, for registered trademarks by the national route, in Romarin for the international trademarks designating Romania (Madrid system) and for the Community trademarks. Checking is not to made on Google.
The result of this checking is mentioned in a Search Report which indicates at least the number of the identical trademark found and its proprietor. The search report is a quality standard imposed by OSIM for processing a trademark application in the preliminary examination.
If, as a result of this checking, is proven the existence of an identical trademark for identical products in the same class or similar products from different classes, registered by national, international, or community route, this will be explicitly mentioned as a warning in the “Regular filing notification and for the awarding of the filing date”, notification which will be accompanied by the “Search Report".
The "Regular filing notification" which contains also a warning of the existence of an identical mark registered accompanied by the “Search Report”   will be communicated to the applicant or to his representative if it has one, and for information to the registered trademark holder.   

With all the convoluted wording of this point, the instruction introduces two procedures which are not provided either by the law or the implementing regulation. Firstly, it is about the documentary research to identify previous registered trademarks, identical. Not only this activity is not required by law, but it is not necessary in the examination process. Instead, it means human resources deployed from activities provided by law and allocated to activities which are not according with the law or the implementing regulation. Secondly, it is about the warning of the applicant and of the owner of the earlier registered trade mark, identified after this arbitrary search introduced by this instruction, holder who, given the database which are checked, can be anywhere in the world. Consequently, and increased expenditure with mail(postal) fees. Based on what? 

Very important to note is the fact that this procedure, in addition to wasting human resources also burdens  the budget OSIM by  increasing of postal costs, as a result of those unnecessary provisions and of a clear misunderstanding of the mechanisms which represent the base of the examination of a trademark application in accordance with legal provisions in force. Also, it should be noted that in the Trademark Division of OSIM, the preliminary examination is performed only formally and, in any case, there is no examination of distinctiveness, as it is suggested in the second paragraph of point 9 of the instruction. The distinctiveness of a trade mark has the headquarter in Article 5 of the trademarks law and is an attribute of substantive examination. It makes but a serious confusion between brand distinctiveness and its availability, but this will be treated in the analysis of point 12.

Point 10 of the instruction has the following content:

After constituting the regular filing, the trademark application is published electronically within seven days, according to the provisions of Article 17 of the trademarks law, chronologically when the deadline is fulfilled (not weekly). Electronic publication will contain, where it is the case, the mention of the identification of an identical earlier trademark.
The electronic publication of a trademark application, under Article 17 of the trademarks law, shall not be subject to the payment of publication fees, given that Law 84/1998, republished, as well as OG 41/1998 - Annex 4, do not provide fees for electronic publication.
If the publication fee is not paid, the regular filing notification will include, under Article 13(5) of the implementation regulation, a warning about the lack of publication fee and a time limit in which it can be paid. According to Article 13(5) of the implementation regulation, in the case that the applicant does not regulate the payment of the fee in the legal period of three months, the trademark application is rejected by the examiner in charge with the specific case.

Due to lack of experience in examining applications for trademark registration and by ignoring basic principles of the law, was reached the first sentence of point 10 of the instruction. In the first two years of applying the law, the publication was made weekly. This meant performing a single publication procedure and issuing only one Official Bulletin of Industrial Property for "Trademark applications" every week. Now, after applying the provisions of instruction, applications are published daily and every day has to be edited an Official Bulletin for the trademark applications published in that specific day. In addition to increasing the volume of work performed, without any advantage to OSIM, applicants or trademark holders, this approach in  publishing trademark applications is a major drawback for anyone interested, without any legal support. Removing of the ex officio examination of relative grounds for refusal means a continuous surveillance of the applications submitted. Where until the “October instruction” this surveillance was required weekly, now it requires a daily surveillance of trademark applications which leads to a substantial increasing of the costs of this activity.

What follows in this point 10 of the instruction is absurd. The law provides clearly, corroborating Article9 and Article17, that a trademark registration application is not published without “the proof of payment of the trademark registration application filing and publishing fee”, which is the condition of the regular filing under Article 9 in the trademarks law. The instruction comes and modifies the law! The instruction imposes  the publication without the fulfilment of legal conditions for regular filing and forces the examiners to perform proceedings without the legal fee being paid, based on the fact that the law and OG 41/1998 does not provide fees for “electronic publication”. The authors of the instruction make the OSIM examiners to break the law, making them punishable for the contravention under Article 36(1) of the OG 41/1998. These authors believe that using a play on words, using “electronic publication” instead of “publication, by electronic means”, as it is in the Article 17 of the trademarks law, the law can be eluded. What is aberrant in the continuation of section 10 in the instruction is that if “the applicant does not regulate the payment of the fee in the legal period of three months, the trademark application is rejected”. In other words, failure to pay the publication fee leads to refusal of trademark registration, but the publication itself (in electronic format) can be made without proof of payment of the publication fee!? In the last sentence of point 10 is invoked Article 13(5) of the implementing regulation, and we can wonder if this regulation was indeed read. The Article 13(5) says essentially that the applicant has three months to fill gaps in the filing and that the filing date is that date on which these items were communicated to OSIM. This provision, in conjunction with Article 17 of the trademarks law, saying that only applications having a regular filing date are published, give the true dimension of illegality of point 10 of the instruction.

The implications of these illegalities are important, encouraging frauds which have already been made on the registration of trademarks. And these issues were the subject of a proposal to amend the law also ignored by management OSIM. Publication of trademark applications without payment of the publication fee is completely illegal, but not only that. This provision of the instruction burdens on the incomes in OSIM budget because the publication of the application is performed without having any control over the subsequent payment of the legal fees. It puts under an uncertain mark the provisional protection which results from publication of the applications, with all the consequences resulting from here. The application of these provisions has, again as a clear result, an easy cancellation in the court, because the publication procedure has infringed the provisions of the trademarks law by paying the fees outside of the legal terms. It also encourages people who see in trademark registration means of extortion of money from earlier registered trade mark holders. Cases are known, also by the authors of instruction, and they are not few. The same problem remains:  who is paying the damages?

Point 11 of the instruction contains the following provisions:

After the regular filing, regular filing notification and after the publication of the trademark application, the Preliminary examination bureau immediately sends the application file to the Substantive examination bureau in order to conduct legal examination procedures. The takeover of the trademark application files in Substantive examination bureau will not be subject to the existing payment of the examination fees.
The assignment of the files in the Substantive examination bureau is made equally, randomly, all examiners having equal competencies and without taking into consideration of certain specializations in certain classes, or for absolute / relative grounds, or files with or without oppositions filed.
In the substantive examination procedure, there will be examined whether all the conditions stipulated in Article 22, Article 2 and Article 5 of the trademarks law are fulfilled.
In terms of the provisions of Article 5(1)(a), read in conjunction with Article 2 of the law, respectively the condition "the signs will allow  distinguishing the goods or services of one enterprise from those of other enterprises”, the examination will be made at the level of identity or similarity, until the risk of confusion on the consumer perception, for identical products/services from the same class or similar products/services from different classes.

Contrary to the very clear legal provision, Article 22(3) which states what must be examined related to a trademark application, the point 11 of the instruction introduces other criteria that have to be examined in relation to earlier registered trademarks, which the law does not stipulate, and this illegal aspect will be reinforced by the text at the next point in the instruction, the point 12, as you will see soon!

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