The implementation of Directive (EU) 2015/2436 brought about a fundamental change in the manner in which the validity of Romanian trade mark registrations may be challenged. Prior to the legislative reforms introduced through Law No. 112/2020, parties seeking the cancellation of a registered trade mark generally had to pursue their claims before the Romanian courts. Today, invalidity and revocation actions may be brought directly before the Romanian State Office for Inventions and Trade Marks (OSIM), the national authority responsible for the registration and administration of trade mark rights.

The introduction of administrative cancellation proceedings has aligned Romania more closely with the framework familiar to practitioners before the European Union Intellectual Property Office (EUIPO) and has substantially altered the strategic considerations surrounding trade mark enforcement. Questions concerning the validity of a registration can now be addressed before a specialised administrative authority, often independently of any infringement or unfair competition proceedings that may exist between the parties.

Although the Romanian system remains comparatively recent, administrative invalidity and revocation actions have rapidly become an established feature of domestic trade mark practice. As a result, an understanding of the procedural framework administered by OSIM has become increasingly important for practitioners involved in the protection and enforcement of trade mark rights in Romania.

The Administrative Route before OSIM

The creation of an administrative mechanism for challenging registered trade marks was one of the most significant aspects of Romania’s implementation of the Trade Marks Directive. The reform was intended not merely to reduce the burden on the courts, but also to provide rights holders with access to a specialist forum capable of determining disputes concerning the validity of registered rights.

To that end, OSIM established a dedicated Cancellation Board responsible for examining applications for declarations of invalidity and revocation. The authority regularly publishes hearing schedules and decisions, reflecting a steadily expanding body of administrative practice. Whilst the volume of publicly available decisions remains modest when compared with the extensive jurisprudence developed by EUIPO, a discernible body of Romanian administrative case law is beginning to emerge.

The existence of a specialised administrative forum has had important practical consequences. Cancellation proceedings have become an increasingly common feature of trade mark disputes and are frequently commenced either alongside, or in anticipation of, infringement proceedings. In many cases, the validity of the registration itself has become the principal battleground between the parties.

Invalidity Proceedings

Invalidity proceedings are concerned with circumstances existing at the filing date or priority date of the contested registration. The premise underlying such actions is that the registration ought never to have been granted because the legal requirements for protection were not satisfied at the relevant time.

Romanian law recognises both absolute and relative grounds for invalidity, closely reflecting the framework established under European Union trade mark legislation.

Absolute grounds concern deficiencies inherent in the sign itself. Registrations may be challenged where the mark lacked distinctive character, consisted exclusively of descriptive indications, had become customary in the relevant trade or otherwise failed to satisfy the substantive requirements for registration. As elsewhere in the European Union, disputes based upon absolute grounds frequently require detailed consideration of consumer perception, market circumstances and the relationship between the sign and the goods or services concerned.

Relative grounds, by contrast, seek to protect earlier rights adversely affected by the registration. The analysis largely mirrors that undertaken in opposition proceedings and focuses upon the relationship between the competing signs, the goods and services at issue and the likelihood of confusion on the part of the relevant public. Where reputed marks are involved, the assessment may extend to issues of unfair advantage, dilution and detriment to reputation.

In practice, invalidity proceedings often arise where a conflicting registration escaped opposition or where the proprietor of the earlier right only became aware of the registration after it had proceeded to grant. The procedure therefore performs an important corrective function within the broader trade mark system.

Bad Faith as a Ground of Invalidity

Among the various grounds upon which a registration may be challenged, bad faith continues to occupy a particularly prominent position.

The concept has been shaped primarily by the jurisprudence of the Court of Justice of the European Union and the General Court, both of which have consistently emphasised that the trade mark system cannot be used as an instrument for securing advantages inconsistent with honest commercial practices. The assessment requires a global examination of all relevant circumstances existing at the filing date and remains highly fact-specific.

Disputes involving former distributors, commercial agents, licensees or business partners are frequently encountered in practice. Similarly, registrations obtained with the intention of obstructing market entry, interfering with commercial negotiations or appropriating goodwill generated by a third party may give rise to allegations of bad faith.

Romania’s first-to-file system provides legal certainty, but it also creates opportunities for opportunistic filings. For foreign undertakings entering the Romanian market, invalidity proceedings based upon bad faith may therefore constitute an important mechanism for recovering control over signs registered locally by third parties.

As European jurisprudence continues to develop, bad faith remains one of the most dynamic areas of trade mark law and one of the most frequently litigated grounds of invalidity.

Revocation Proceedings and the Requirement of Genuine Use

Where invalidity proceedings focus upon defects existing at the time of registration, revocation proceedings address circumstances arising subsequently.

The most frequently invoked ground for revocation is non-use. Under Romanian law, a trade mark becomes vulnerable where it has not been put to genuine use in relation to the goods or services for which it is registered during a continuous period of five years and no proper reasons for non-use exist.

Although the legal principle itself is straightforward, proceedings based upon non-use are often among the most evidentially demanding disputes encountered before OSIM. Proprietors must establish not only that use occurred, but that such use was genuine and consistent with the essential function of the trade mark as an indicator of commercial origin.

In practice, revocation actions frequently succeed not because the mark has not been used at all, but because the evidence submitted is insufficient to demonstrate the nature, extent, duration or commercial significance of that use. The assessment remains highly contextual and requires consideration of the characteristics of the relevant market, the scale of the commercial activities concerned and the nature of the goods or services at issue.

Evidence typically relied upon includes invoices, catalogues, advertising materials, packaging, website extracts and sales documentation. However, isolated examples of use will rarely suffice where they fail to demonstrate genuine commercial exploitation of the registration in the marketplace.

For multinational undertakings, particular difficulties may arise where relevant evidence is dispersed across multiple jurisdictions or business units. The preparation and preservation of evidential records therefore remains an important aspect of trade mark portfolio management.

Other Grounds for Revocation

Non-use is not the only basis upon which a registration may be revoked.

Romanian law also permits revocation where a trade mark has become the common name in the trade for the goods or services for which it is registered. Although such cases remain relatively uncommon, they illustrate the importance of preserving the distinctive character of a sign throughout its commercial life.

Similarly, revocation may be sought where, through the acts or inactivity of the proprietor, the mark has become liable to mislead the public, particularly as regards the nature, quality or geographical origin of the relevant goods or services.

Whilst these grounds are encountered less frequently than non-use, they reflect an important principle underpinning trade mark protection: the continued existence of exclusive rights depends upon the sign retaining its ability to perform the functions for which protection was granted.

Administrative and Judicial Proceedings

The introduction of administrative cancellation proceedings has not displaced the role of the Romanian courts. Rather, it has created a framework in which administrative and judicial remedies coexist.

OSIM now serves as a specialised forum for determining the validity of registered rights, whilst the courts continue to play a central role in infringement litigation, unfair competition disputes and appeals against administrative decisions. The authority also maintains a dedicated Board of Appeal responsible for reviewing first-instance decisions issued in trade mark matters.

The relationship between administrative and judicial proceedings has become an increasingly important strategic consideration. In certain disputes, an application for invalidity or revocation may significantly affect the course of parallel infringement proceedings. In others, the existence of a cancellation action may influence settlement discussions or broader commercial negotiations between the parties.

The availability of multiple procedural avenues has therefore expanded the range of strategic options available to rights holders and alleged infringers alike.

Observations on Current Practice

Several features of the Romanian system have become increasingly apparent since the introduction of administrative cancellation proceedings.

First, invalidity and revocation actions are no longer exceptional remedies. They have become a routine aspect of trade mark enforcement and defence strategy, particularly in disputes involving conflicting earlier rights, allegations of bad faith or claims based upon non-use.

Secondly, evidential issues frequently prove decisive. In non-use proceedings, the outcome often depends less upon the existence of use than upon the quality and coherence of the evidence adduced. Proprietors who maintain comprehensive records of commercial activities are invariably better placed to defend their registrations.

Thirdly, the growing body of administrative decisions issued by OSIM is contributing to the gradual development of a more predictable and sophisticated cancellation practice. Whilst the system has not yet generated a body of jurisprudence comparable to that available before EUIPO, clear signs of procedural and substantive consolidation are beginning to emerge.

The introduction of administrative invalidity and revocation proceedings has fundamentally altered the Romanian trade mark landscape. What was initially conceived as a legislative reform designed to implement European requirements has evolved into a significant component of domestic trade mark practice.

Although Romanian administrative cancellation proceedings remain relatively recent, a sufficiently consistent body of practice is beginning to emerge. For rights holders, the increasing availability of specialist administrative remedies before OSIM has altered the strategic landscape considerably, particularly in disputes involving non-use, bad faith and conflicting earlier rights.

As administrative practice continues to develop and further guidance emerges from both Romanian and European authorities, invalidity and revocation proceedings are likely to assume an increasingly important role in the administration, protection and enforcement of trade mark rights in Romania.

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