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.
