A Romanian filing made by a local distributor does not necessarily leave the brand owner without recourse. The available response depends on the status of the filing, the nature of the commercial relationship and, above all, the evidence showing why the application was made.

International brands often enter a new market before their trade mark portfolio has caught up with their commercial plans. A distributor is appointed, products are launched and local marketing begins. The Romanian application is left for later – or assumed to be covered by an EU or international filing that, on closer inspection, does not provide the expected protection.

The issue may only come to light when the distribution agreement is renegotiated or terminated. A search then reveals that the local distributor has filed the brand, or a close variant of it, in its own name.

Romania operates on a first-to-file basis. That principle gives the earlier applicant a significant procedural advantage, but it does not make an unauthorised filing unassailable. Romanian trade mark law contains specific provisions dealing with applications made by an agent or representative without the proprietor’s consent. Bad faith and other earlier rights may provide additional grounds of challenge.

Not every distributor filing is treated in the same way

The first question is whether the distributor falls within the statutory concept of an agent or representative of the trade mark proprietor.

Romanian law provides that a mark may be refused or cancelled where it was applied for, in the agent’s or representative’s own name, without the proprietor’s consent, unless the applicant can justify its conduct. The rule reflects Article 6septies of the Paris Convention and its equivalent in EU trade mark law.

The wording should not be read as applying only to a formally appointed commercial agent. The substance of the relationship matters more than the title used in the agreement. A distribution arrangement may fall within the rule where the parties’ cooperation placed the distributor under a duty of trust and loyalty towards the brand owner.

This broader approach was confirmed by the Court of Justice of the European Union in EUIPO v John Mills (C-809/18 P). The dispute concerned a distributor that applied for a sign derived from its supplier’s US trade mark. The Court held that the concepts of agent and representative extend to contractual relationships involving commercial cooperation that creates a fiduciary relationship. It also confirmed that the relevant signs, and the goods or services concerned, need not be strictly identical; similarity may be sufficient.

The existence of a distribution agreement is nevertheless not conclusive by itself. A short-lived resale arrangement, with no obligation to represent or protect the supplier’s commercial interests, may present a more difficult case. The agreement, the parties’ conduct and the degree of trust placed in the distributor must therefore be examined together.

The position while the application is pending

The procedural response should begin with a review of the Romanian Trade Mark Register. It is important to establish:

• whether the sign is still an application or has already been registered;
• the relevant filing, publication and registration dates;
• the goods and services covered;
• whether the distributor has filed other versions of the brand, logos or product names; and
• whether related filings exist for company names, domain names or social media accounts.

If the application is still pending, an opposition may be available. Under the current Romanian procedure, the opposition period is two months from publication of the allowance to registration of the application. The precise publication stage should be checked promptly, as an informal exchange with the distributor does not suspend the statutory deadline.

Where the facts satisfy the agent or representative provision, the proprietor may rely on that specific ground. In other cases, an opposition may be based on an earlier Romanian, EU or international right having effect in Romania. Romanian law also addresses situations in which the contested sign can be confused with a mark protected abroad and the applicant acted in bad faith.

An opposition can prevent the distributor from obtaining the registration, but it will not give the foreign proprietor ownership of the Romanian application. If preserving the filing date is commercially important, a negotiated transfer of the pending application may be preferable. Any settlement discussions should therefore be conducted without allowing the opposition deadline to expire.

Once the mark has been registered

Romanian law provides a particularly useful remedy where the mark has already been registered in the name of the proprietor’s agent or representative without consent. The proprietor may oppose the representative’s use of the mark and may request that the mark be transferred to it. The transfer claim replaces a cancellation request under this specific provision.

Transfer and cancellation produce materially different results. A transfer preserves the registration and its filing date, which may be important if intervening applications have been filed or if the mark is already being used in enforcement proceedings. Cancellation removes the registration and, where granted, takes effect retroactively from the filing date. The brand owner may then need to rely on its own separate application or registration.

Bad faith is an independent ground for cancellation. It is assessed by reference to the applicant’s intention at the filing date, taking account of all relevant objective circumstances. Prior knowledge of the brand is important, but knowledge alone will not always be enough. The surrounding facts must support the conclusion that the filing departed from accepted standards of honest commercial conduct.

Cancellation may be sought before the Bucharest Tribunal or through the administrative jurisdictional procedure before the Romanian State Office for Inventions and Trademarks (OSIM). The choice should not be made solely by comparing filing fees. The relief required, the evidential record, any related contractual claims and the likelihood of an appeal all need to be considered. An OSIM cancellation decision may be challenged before the Bucharest Tribunal and subsequently appealed to the Bucharest Court of Appeal. OSIM cannot determine the validity and civil effects of contracts concluded on the basis of the cancelled mark, which may make court proceedings more appropriate where the dispute extends beyond the register.

The evidence usually decides the case

Disputes of this kind are highly fact-sensitive. The most useful evidence is often found in the commercial file rather than in the trade mark register.

Relevant material may include:

• distribution, agency, licence and confidentiality agreements;
• correspondence showing that the distributor knew the brand belonged to the foreign company;
• invoices, purchase orders and shipping documents predating the Romanian filing;
• product catalogues, packaging files and marketing materials supplied to the distributor;
• instructions concerning the presentation or protection of the brand;
• discussions about who would file or pay for local trade mark protection;
• evidence of the proprietor’s registrations and use in other countries;
• communications surrounding the termination or renegotiation of the relationship; and
• any attempt by the distributor to use the registration as leverage or to sell the brand back to its proprietor.

The chronology should be prepared at the outset. A filing made shortly before termination, after a disagreement or during negotiations over exclusivity may carry a different evidential weight from one made openly at the beginning of the relationship and reimbursed by the brand owner. The distributor may argue that the filing was made to meet local regulatory, customs or marketplace requirements. Contemporaneous documents will usually be more persuasive than explanations first advanced after the dispute arose.

Litigation is not always the first commercial choice

A formal challenge may be necessary, particularly where the distributor is already asserting the registration against the brand owner, importers or replacement distributors. Interim measures may also need to be considered if the registration is being used to disrupt sales or seize control of online channels.

In other cases, a carefully structured transfer may resolve the matter more quickly. A settlement should deal with the entire group of assets connected with the brand, not only the principal trade mark registration. Depending on the circumstances, this may include pending applications, logo marks, local domain names, marketplace accounts and social media identifiers.

The documentation should also address responsibility for recordal at OSIM, cooperation with pending proceedings, warranties concerning additional filings, the treatment of existing stock and any continuing use of the sign. A promise to “withdraw the trade mark” is not an adequate substitute for a properly executed transfer where the brand owner wishes to retain the filing date.

Reducing the risk at the start of the relationship

The most effective protection remains an early filing. A Romanian national application may be appropriate in some cases; in others, an EU trade mark or an international registration covering the European Union will provide the required territorial protection. The choice should be made before products are supplied and before local marketing begins.

Distribution agreements should state clearly that:

• all trade marks and associated goodwill belong to the brand owner;
• the distributor may not file or register identical or similar marks, company names, domain names or other identifiers;
• any filing made for local administrative purposes must be made in the proprietor’s name or transferred immediately on request;
• the distributor must notify the proprietor of conflicting applications and suspected infringements; and
• all brand-related assets and access credentials must be returned or transferred when the relationship ends.

Contractual protection should be supported by monitoring. Periodic searches of the Romanian and EU registers are inexpensive compared with proceedings brought after the distributor has secured a registration and built its position around it.

An application filed by a Romanian distributor is not simply a priority dispute. The legal analysis turns on the relationship between the parties, the proprietor’s earlier rights, the applicant’s purpose and the procedural stage at which the filing is discovered.

Romanian law offers targeted remedies, including opposition, cancellation and, in qualifying agent or representative cases, transfer of the registration. The practical result, however, will often depend on how quickly the proprietor acts and how well the commercial history has been documented.

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This material provides general information only and does not constitute legal advice. Specific advice should be obtained in relation to individual circumstances.

For advice on a Romanian trade mark filed by a distributor or former commercial partner, contact our team using the form below.