And... the end!

Point 26 of the instruction has the following content:

In the case when,  according to  Article 22 of the trademarks law, the accelerated examination procedure is requested, this must be accompanied by the proof of payment of the corresponding fee without which the Trademarks and Geographical Indications Division cannot fit within the examination of the trademark application in three months.

The applicant of a trademark application who wishes accelerated examination must state this expressly in the trademark application form, which will be amended accordingly. The request for the accelerated examination must be accompanied by the copy of the proof of payment of the additional fee, according to Article 22(2) of the trademarks law.

Any accelerated examination request filed with OSIM after the date of the publication the trademark application cannot be considered even if it is accompanied by a payment of the legal fee and the payment made shall be refunded.

There is a principle known as that "ubi lex non distinguit nec nos distinguere debemus". The law does not provide for any special obligation of the applicant when he wants an accelerated examination, besides the payment of the examination fee substantially increased. Imposing a specific moment for the accelerated examination fee has no legal basis. Any bona fide specialist understands that article 22 paragraph 1 and 2, in conjunction with Article 1 of OG 41/1998, republished, means that the period of 6 or 3 months is running from the moment when the legal fee is paid due to the wording of Article 22(1) of the trademark law, "on condition of payment of filing fee and examination fee required by the trademarks law”. Accelerated examination is a special way which anyway cannot circumvent the legal procedures of opposition examination proceedings, which means prolonging the examination more than the three months stipulated by law. The legal fee for accelerated examination is three times higher than the normal examination and claiming it at the moment of the filing, when you still do not know if there will be or not filed an opposition against the trademark application is also unfair to the applicant, besides being illegal.

The Service Instruction no. 5/2012 is an error, starting from editing to the overwhelming majority of its content. Why was it necessary to roughly change the law through this service instruction, why OSIM examiners were forced to break the law applying this service instruction and how these actions of the authors of the instruction are positioned vs. the malfeasance of abuse, is to be established by the law enforcement bodies.

In the end, the Service Instruction no 5/2012 is the expression of the inability to understand that the world has changed, that a state institution cannot dictate something just because it wants so, firstly it must be legal, and not only that. It must be oriented to those people who are interested in the services provided by OSIM and pay the fees from which we live, those who are working in OSIM. Today nobody forces anyone to register a trademark, and the person concerned will address an application to OSIM only to the extent that this institution is attractive, respects the law and respects the citizens’ rights and interests. Otherwise, there are various possibilities to obtain registration of a mark to choose from, and OSIM… will remain with the “October instruction”! Only.

Anyway, point 26 of the instruction is caducous because last week, in a tentative of fully modifying of the Article 22 of the trademark law, the accelerated examination was repealed. So, the fee was not diminished but complete eliminated, not because the accelerated examination is now for free, just because is not anymore an option for the applicants!  

This evening points 16, 17 and 18. Tomorrow, the end...

Point 16 of the instruction has the following content:

In case of submission of one or more oppositions concerning the same trademark application (abbreviation into Romanian = CIM), the following principles will be taken into account:

a) If against a CIM  are filled more oppositions, each is solved   separately, in chronological order of their submission date and there will be issued  a Notice  for each opposition resolved.

b) If against a CIM are filled more oppositions, each is solved separately, without considering that by the admission of one opposition, the others remain without object.

c) The Notices on solving the oppositions against the same CIM will be transmitted to the examiner. The decision concerning the trademark application will clearly mention these Notices for every opposition separately and will be duly and completely motivated.

The "principles" contained in point 16 of the instruction are as illegal as the provisions contained in point 14 of the same instruction. Again the authors do not understand that the parties, in opposition proceedings, must be equal and the conflicting rights invoked must be valid. FOR BOTH! This is a principle stated in the Article 20(3) of the trademarks law. If the first opposition is solved in favour of the opponent and the trademark application is rejected in its entirety, then one of the parties involved in the second opposition holds an uncertain right and, based on the symmetry principle, it should be suspended until the decision of the first opposition remains final. Only then it can decide on the other opposition(s). And yes, if the solution is finally confirmed, the other opposition has no object anymore thus, the fee must be returned to that opponent. Again the instruction, in this point 16, violates the principles of the trademark law, imposes unnecessary work and disadvantages the owners of the earlier trademarks involved. Only because of lack of experience in the trademark examination procedures!

Point 17 of the instruction requires:

In the application form for registration of the trademark shall be inserted a new section as follows: The applicant declares on his own responsibility, the registration of the trademark is required in good faith.

Is it not obvious that, until it is proven otherwise, in all cases good faith is presumed?

On the other hand, when the online filing procedure and form were implemented, in the framework of a cooperation programme with a European Agency, this provision in the instruction was instantly “forgotten”.

Point 18 of the instruction has the following content:

The trademark applications filed using the international route are examined, by the Bureau of International Examination, under Article 64 and 65 of the trademarks law and Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement.

Although seemingly innocuous, this point 18 of the instruction violates the principle of equal treatment contained in art. 2 of the Paris Convention for the Protection of Industrial Property, Act of Lisbon, in that the Instruction´s provisions do not apply to the international trademark applications. They will be examined "under Article 64 and 65 of the trademarks law and Common Regulation… ", which means that they will not "benefit" of the changes and interpretations to the trademarks law and implementation regulation coming from the provisions of the Service Instruction no 5/2012, changes and interpretations, outside the trademarks law and its spirit, that apply only for national applications. Why?

Provisions contained in the instruction at points 19 to 21 are useless because in OSIM, at least after the entry into force of the new law, on May 10, 2010, we proceeded in the same manner, and the provisions contained in sections 22 to 25 are organizational issues.

... 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!

This evening, the point 12 of the "October Instruction"

Point 12 of the instruction contains the following content:

Given the provisions of:

Article 8 according to which "trademark right belongs to the applicant who first filed, according to the trademarks law, the trademark application;

Article 6 paragraph 1 letter a, according to which "a trademark shall not be registered if it is identical with an earlier trademark and the goods or services for which the mark is applied for are identical with those for which the earlier mark is protected";

Article 2 according to which “any sign may constitute trademark . . . provided that such signs are capable of distinguishing the goods or services of a person from those of another person" in connection with Article 22 paragraph 2 lit. (is missing in the original text) and Article 5 , paragraph 1 , respectively.

OSIM shall reject the applications for which in the search report, or in any other way, was mentioned/identified the existence of an earlier identical trademark for the same classes or products, and the applicant has not submitted prior consent from the earlier trademark holder.

This text is trying to find a way to refuse the identical trademark applications in a completely different manner than provided by law and it is difficult to understand the ambition of the instruction´s authors to accomplish this. Article 8 of the law is the one governing anteriority. There is no trademarks law without such Article that marks a temporal succession of trademark registration to be considered, and Article 8 in our law does exactly this thing. Article 6 is incompletely quoted. A trademark registration is rejected also if it is similar to an earlier registered trademark, not only identical, and the goods or services are identical or similar. The truncated quoting of the Article 6 statements introduces unacceptable discrimination amongst the holders of earlier registered trademarks.

In other words, OSIM protects, by self-empowering, because the law does not grant this privilege, only the holders of identical earlier registered trademarks as for the others they better pay for opposition, because WE, the signatories of the instruction, do not take them into account. Unacceptable and outrageous alike! Article 6 has effects only by using the Article 19 in the trademarks law, which establishes the procedure for opposition. Without Article 19, the Article 6 is just a list of situations and that's all. Article 2 of the law is the definition of the trademark, and here is just a truncated quote, the instruction´s authors having a completely wrong understanding of the notion of the trademark distinctiveness. It is incomprehensible how OHIM Examination Manual is quoted in several occasions in the text of the instruction, but has not been studied in terms of distinctiveness of a trademark in order to understand the error in which the instruction´s authors are. Equally, if not more practical, would have been   to take into account the opinion of OSIM examiners, the approach being identical.

We make a parenthesis to explain. The word "bread" cannot be registered as a trademark for bakery products because it is completely devoid of distinctiveness, actually naming the product. The construction of “black with seed” possibly accompanied by a graphic element, is weak distinctive, alluding to the product. The word "Pegasus" is distinctive for bakery products and can be registered as a trademark for these. That does not mean that a new application for the trademark "Pegasus" can be rejected on lack of distinctiveness because OSIM found an identical earlier trademark and claims, wrongly, that this application does not allow "distinguishing goods or services of one person from those another person ". These things are part of the ABC examination of trademark applications.

Turning to the point 12 of the instruction, it is completely illegal that, by ambiguous construction using quoting of truncated law Articles, the examiners in OSIM to be obliged to violate the law. Rejection of a trademark application on the basis of an earlier mark cited in a research report that the law does not require, without having as base a decision after an opposition, is completely outside of the provisions of the trademarks law. And not only that, but this shows again the inexperience and ignorance of the mechanisms that actually govern the trademarks’ examination. Refusal of registration - based on the instruction’s provisions, thus invoking an earlier mark out the opposition procedure - is completely illegal and violates both the rights of the holder of the trademark previously registered and those of the applicant. Perhaps it is more difficult to understand, but as long as the law does not provide ex officio examination of relative grounds for refusal, OSIM has no right to use the trade mark registered against a trademark application and anytime can be sued for using a registered trademark without right. On the other hand, refusal of registration on the basis of the instruction’s provisions violates the applicant's right – conferred by law - to request proofs of use for the earlier trademark; in their absence the trademark application can be admitted. All these aspects require experience in the examination of trademark applications, experience that exists abundantly in OSIM, but was spurned the development of this instruction.

Point 13 of the instruction contains an organizational matter, which was, anyway, modified by a later administrative decision.

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!