Point 7 of the instruction has the following content:
"Given the need to support the
applicants during the current economic crisis, OSIM may grant extensions of the
deadline of the payment of fees, without prolonging the examination and
decision taking deadlines regarding a trademark application, considering the
provisions of article 22(5) of the trademarks law. In all cases, no decision
will be taken without the payment of the pending fees.
While in substantive examination
procedure of a trademark application, before taking any decision, at the
completion of 6 months or 3 months in the case of accelerated examination, the
first checking will be done on the existing of proof of payment of legal fees,
depending on which, if necessary, continues the substantive examination. In the
absence of the proof of payment of the examination fee, the substantive
examination procedure is not performed. The examiner may notify the applicant,
within 30 days prior to the expiration of the legal period for examination,
that he is obliged, according OG 41/1998, to pay the examination fee, otherwise
the trademark application shall be rejected."
This text interferes with some very clear legal
provisions regarding the payment of examination fee. We are speaking about
article 14 of the law that grants to the applicant a period of three months
from the filing date of application to communicate the proof of payment of the
examination fee. The presence of the registration fee in this article is an
evidence of the lack of correlation between the provisions of the new law and
the previous law, in the new law the registration fee, in the words
"filing fee", is required as from the filing date, as a condition of
the regular filing, and the same applies for the publication fee (see article 9
of the trademarks law). Also, it is about the provision of the article 16(3) of
the law that establishes the possibility of deferring with two months the payment of examination fee, this being
the only legal option to defer a the
payment of the examination fee. To be more specific, in five months from the
filing date, if the examination fee is not paid, according with the article 16
of the law the application is rejected.
Here
it is worth mentioning article 1 and the article 36(1) from OG 41/1998,
provisions that prohibit performing any procedures without paying the legal
fees. It should be noted that even if the contraventions mentioned in article 36(1) from OG 41/1998, as
republished, resulted from the application of the instruction for almost two
years, are not ascertained by the
inaction of the person required by law to do so, this does not mean that they
do not exist.
The text of the point 7 of the instruction is
confusing and contains contradictory provisions. It says: While in
substantive examination procedure of a trademark application, before taking any
decision, at the completion of 6 months or 3 months in the case of accelerated
examination, the first checking will be done on the existing of proof of
payment of legal fees, depending on which, if necessary, continues the
substantive examination. In other words, the examination procedure is
performed regardless if the proof of payment of the fee in question exists, and
its existence is checked prior to take a decision, thus at the end of the
examination. This is contrary to the article 1 of OG 41/1998. In contradiction
with the quoted text is the following sentence of the point 7 of the
instruction: In the absence of the proof of payment of the examination
fee, the substantive examination procedure is not performed. This text is
according to the trademarks law, but it is contradicted by the previous paragraph,
according to which the examination is performed with or without the existence
of proof of payment of examination fee. In fact the intention of the
instruction´s authors was to compel the examiners to perform the examination
without the existence of proof of the payment of examination fee in the dossier
of the trademark application. This is confirmed by the next sentence of the
point 7 and the point 6 of the instruction which says: the sending of the trademark application file for substantive
examination is made immediately after the electronic publication, without being
conditioned by the existence of the proof of payment of the fee requested for
performing the examination procedure.
The point 7 of
the instruction has a final sentence which establishes that: The
examiner may notify the applicant, within 30 days prior to the expiration of
the legal period for examination, that he is obliged, according OG 41/1998, to
pay the examination fee, otherwise the trademark application shall be rejected. This
provision does not have any support neither the trademarks law nor in the
regulation in force and leads to a useless wasting of time and money simply
because the moment chosen by the instruction for this re-notification of the
applicant is anyway outside of the legal time limit for the payment of the
examination fee.
The point 7 of the instruction is misleading for the applicant. A registration
decision for a trademark, following the provisions of point 7 of the
instruction, leads to a single and certain result: easy cancellation in the court,
because the registration procedure infringed the provisions of the
trademarks law by paying the fees outside of the legal time limit.
The problem which
remains: who is paying the damages?
