marți, 13 mai 2014

To modify a law? Nothing easier! All you need is an instruction!

On December 13th, 2012, the “World Trademark Review” published the article “Trademark office violates law by reintroducing examination on relative grounds”. For those interested persons who have read this article and want to understand more, or for those who want to be prepared if they intent to apply for a trademark in Romania, I consider that it is a “must” to be aware of the modifications of the Romanian Trademarks Law no. 84/1998, republished, by an administrative act signed by the deputy general director of The Romanian State Office for Inventions and Trademarks, Mr Alexandru Cristian Strenc, together with the director of Legal, Trademarks and Design, International Cooperation Directorate, Mr Liviu Bulgar and the head of Legal Division, Mrs Cornelia Moraru. This administrative act, namely Service Instruction no. 5, dated October 17th, 2012, which modifies a law given by the Romanian Parliament, completely changes the approach for the trademark applications examination and raises a huge question mark concerning the validity of all the decision given by the Romanian State Office for Inventions and Trademarks concerning the trademark applications examined following the “October Instruction”.

This text, like those that follow, analyses the Service Instruction no. 5/17.10.2012, on the examination procedure in the Trademarks / Geographical Indications Division (hereinafter referred to as “the instruction” or “instruction”). 

The analysis of the instruction will not focus on logical, grammatical or other similar errors, which are present, but it will outline the contradictions between the provisions of this instruction and the regulations in force, currently governing the protection of trademarks and geographical indications in Romania, mainly:
- the Law no. 84/1998, republished, (hereinafter referred to as "law" or "trademarks law"), published in Official Gazette no. 350 of May 27th, 2010; the full text of the English version of this law can be found at:;
- the implementing regulation, namely the Government Decision no. 1134/2010 (hereinafter " implementing regulation" or “regulation”), published in Official Gazette no. 809 of December 3rd, 2010; the full text of the English version of this regulation can be found at:
- the Government Ordinance no. 41/1998, republished, concerning the fees in the field of industrial property protection and the conditions for using them, published in Official Gazette no. 959 of November 29th, 2006 (hereinafter "OG 41/1998"); the full text of the English version of this ordinance can be found at:

It is important to be mentioned from the beginning that the following analysis is not based on an official English version of the Service Instruction no 5/2012, simply because it does not exist. Consequently, the English versions of the provisions cited from the instruction were translated by the author.

The analysis will not cover the legal provisions which entitle the Deputy Director General of the Romanian State Office for Inventions and Trademarks (hereinafter "OSIM") to issue such a document, given that the article 6, paragraphs 3 of Government Decision no. 573/1998, as amended, refer only to the competence of the Director General of the OSIM. Any special mandate should have been mentioned in the preamble of this instruction.

Also, the organizational matters regarding the Trademarks Division in OSIM contained in the instruction will not be included in this analysis. They were introduced based on completely different considerations than those of a competitive management. 

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The changing of the Romanian trademarks law, in force from 1998, occurred in the context of the accession to the European Union, for the implementation in our national law of the provisions contained in Directive 2008/95/EC and in the Regulation 207/2009 on the Community trade mark. Changing the trademarks law not only meant relinquishing the ex officio examination of relative grounds, but also enrolling in a natural evolution, fully compliant with the European trends regarding acquiring "monopoly" rights that are born from a trademark registration, as well. This trend is fully confirmed by the proposed text amending Directive 2008/95/EC. The project published on the website of the European Commission stated, at page 9, first paragraph (English version): 

Finally, the ex officio approach creates legal uncertainty, since offices applying the ex-officio system raise objections, as far as earlier rights are concerned, only on the basis of earlier registered rights that have been filed for identical or similar goods and services. Accordingly, they cannot offer a guarantee that an application which successfully passes the ex-officio control will not subsequently be opposed on the basis of a mark which has acquired reputation in the marketplace and/or on the basis of an earlier well-known mark that has not been registered. However, this leads to an unacceptable duplication of procedures which are both time consuming and inefficient.

Embodying these ideas, the draft amending Directive 2008/95/EC introduces by the content of Article 41, the following obligation for Member States National Offices: 

The offices shall limit their examination ex officio of whether a trade mark application is eligible for registration to the absence of the absolute grounds for refusal provided for in Article 4.

With great satisfaction it can be seen that the current Romanian trademarks law already contains this provision, in fact the entire modification action was undertaken in order to amend the law in this respect. More specifically, we are referring to article 22(3)(c) of the trademarks law, which in essence, complies with the provisions of the draft amending Directive 2008/95/EC. 

All this efforts failed in October 17th, 2012, when by the will of three senior officials of the OSIM, a law given by Romanian Parliament is modified by a much lower administrative act, i.e. a service instruction. The main purpose of this administrative act is to reintroduce ex-officio examination for relative grounds in a very original manner, making an elementary confusion between distinctiveness of a trademark and the availability of a trademark, as you will see further.

In Romania it is known that trademarks law has many inconsistencies that generated some problems from the beginning, meaning from the entering into force of the amendments on May 10th, 2012. These inconsistencies may be the result of a prolonged legislative process (about 5 years), but in a greater extent they are due to a total lack of coordination and correlation of changes made into the bill, during the legislative process, and to the lack of correlation between the modified and the unmodified provisions of the old trademarks law. We have to bear in mind that it was a bill meant to modify the old trademarks law and not to issue an entire new trademarks law. Thus, some provisions of the old law were modified, others remained unchanged. Especially, because it intended to change the examination system of trademark applications, the permanent correlation of the provisions, new ones together with the old ones, would have to be mandatory. 
Seeing the results, i.e. the republished law from May 10th, 2010, it turns out that this goal was not achieved. The fact that changes occurred in the text of the bill is absolutely normal and cannot be an excuse, this enters in the logic of the adoption process, but these changes would have been correlated as to maintain the logic of the legal act as a whole and to achieve the objective for which it have been adopted. Only by way of example, although the law has an article for definitions, article 3, this does not contain the notion of regular filing of the trademark, one of the very important concepts when examining the application for registration of a trademark, this notion is used nine times before being defined in paragraph 1 of article 9.

Unfortunately, the instruction does not treat any of the main problems of the trademarks law in force. Starting with January 2011, there were submitted to the management of OSIM many proposals for amending the trademark law. Even though these proposals were based on the day by day experience in the trademark examination according to the provisions of the new trademarks law - into force from May 10th, 2010 - and contained solutions for the problems encountered as a result of the implementation of this new law, they were completely ignored. 

As a last general remark, the instruction does not comply with the principle of regulation for the future because while it was issued on October 17th, 2012, at point 1, it is stated that its provisions shall apply starting with August 1st, 2012!!! What is not mentioned in the body of the instruction is what would happen in case of activities contrary to its provisions, conducted in the period when the instruction should be respected, but it hasn’t been issued yet.

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Because the time is limited I will come shortly with analyses for all important provisions contained in the Service Instruction no. 5/2012, already famous, but disastrous! 
Sorry, I didn't find other rhyme!