Romanian law permits the validity of a registered trade mark to be challenged either before the Romanian State Office for Inventions and Trade Marks (OSIM) or directly before the Bucharest Tribunal. Although both routes are governed by the same substantive provisions, they differ materially in their procedural framework, evidential dynamics and remedial scope. The appropriate forum must therefore be determined by reference to the legal basis of the challenge, the nature of the evidence and its relationship with any existing or contemplated infringement proceedings.

A dual system of jurisdiction

For many years, invalidity and revocation of Romanian trade marks fell within the exclusive jurisdiction of the Bucharest Tribunal. That position changed following the transposition of Directive (EU) 2015/2436, Article 45 of which required Member States to establish an effective administrative procedure for the revocation and declaration of invalidity of national trade marks.

Romania implemented the administrative procedure through amendments to Law No. 84/1998 on Trade Marks and Geographical Indications, supplemented by Government Emergency Ordinance No. 169/2022. The resulting system preserves direct access to the Bucharest Tribunal while conferring parallel jurisdiction upon a specialist commission established within OSIM.

The administrative route is expressly characterised as optional and administrative-jurisdictional. A claimant is not required to exhaust proceedings before OSIM before commencing judicial proceedings. Consequently, forum selection arises at the outset of the dispute and cannot be treated merely as a question of procedural convenience.

The OSIM commission has become an established component of Romanian trade mark practice. It conducts hearings throughout the year and publishes hearing lists and operative parts of its decisions. Its developing body of administrative practice is progressively acquiring significance for both domestic and international rights holders, even though final judicial supervision remains available.

Invalidity and revocation protect different legal interests

The distinction between invalidity and revocation is fundamental. Invalidity concerns a defect affecting the registration from its inception. Revocation concerns circumstances arising after registration that no longer justify the continuation of exclusive rights.

A Romanian trade mark may be declared invalid where it was registered contrary to the absolute grounds for refusal, where it conflicts with an earlier right or where the application was filed in bad faith. Depending on the ground relied upon, the assessment may involve the inherent distinctiveness of the sign, descriptiveness, deceptiveness, public policy, likelihood of confusion, reputation, copyright, rights in a name or image, or the applicant’s conduct at the filing date.

A declaration of invalidity produces retroactive effects from the filing date of the contested registration. In legal terms, the registration is treated as having been defective ab initio, subject to the statutory rules governing the effects of final decisions and legal acts concluded before invalidity was established.

Revocation, by contrast, may arise where the mark has not been put to genuine use in Romania for an uninterrupted period of five years, where it has become the customary designation of the relevant goods or services through the action or inactivity of its proprietor, or where its use has rendered it liable to mislead the public. Revocation ordinarily takes effect from the date on which the application was filed, although an earlier effective date may be established at the request of a party where the relevant ground had already arisen.

Both invalidity and revocation may be confined to part of the specification. The formulation of the goods and services against which the challenge is directed is therefore a substantive component of the case rather than a matter of administrative drafting. An imprecisely framed request may enlarge the evidential burden or fail to remove the registration in respect of the commercially relevant part of the specification.

Proceedings before OSIM

Administrative proceedings are heard by a three-member specialist commission operating within a separate invalidity and revocation service. The legislation seeks to preserve decisional independence by providing that commission members are dedicated to these proceedings and do not participate in other OSIM procedures concerning the same trade marks. The statutory rules on judicial incompatibility also apply to commission members.

Proceedings are conducted in Romanian. The application must identify the contested registration, the goods or services concerned, the legal and factual grounds relied upon, the earlier rights invoked, where applicable, and the supporting evidence. Documents in another language must be accompanied by Romanian translations; untranslated documents are excluded from consideration.

Following an examination of the formal requirements, the application is communicated to the trade mark proprietor, who is ordinarily granted 30 days to submit a defence and supporting evidence. The applicant may reply within ten days of communication of the defence. The dispute is subsequently examined at a hearing to which the parties are summoned. Hearings are public in principle, although the commission may restrict access where publicity would prejudice a party or conflict with public policy.

The procedure is predominantly documentary, but it is not confined to an exchange of written observations. The commission may hear oral submissions, raise questions of fact or law and grant a further hearing where additional evidence is justified. Its decision must nevertheless be based exclusively on the facts and evidence contained in the case file. The evidential record must consequently be constructed with the same discipline as a judicial file.

OSIM may grant invalidity or revocation in whole or in part, dismiss the application, record a withdrawal or settlement, or declare the proceedings discontinued where the matter has remained inactive for reasons attributable to the applicant. Its jurisdiction is confined to the status of the registration. In particular, the commission cannot determine the validity of civil-law transactions concluded on the basis of an invalidated mark or adjudicate the civil consequences produced by those transactions. Such matters remain within the jurisdiction of the courts.

A reasoned decision must be communicated to the parties within three months of its pronouncement. It may be challenged before the Bucharest Tribunal within 30 days of communication. The Tribunal’s judgment on that challenge is subject only to appeal before the Bucharest Court of Appeal.

The availability of two stages of judicial supervision is an important qualification when assessing procedural economy. An OSIM application may provide a relatively concentrated first-instance procedure, particularly where the dispute turns on register-based rights, comparison of signs or documentary proof of use. If the decision is contested, however, the dispute may ultimately pass through three levels of adjudication. The administrative route cannot therefore be presumed to be invariably shorter or less costly without regard to the likelihood of judicial challenge.

Direct proceedings before the Bucharest Tribunal

The judicial route remains available without prior recourse to OSIM. A direct invalidity or revocation action is brought before the Bucharest Tribunal, irrespective of whether the claimant could have obtained the same registry-related result through administrative proceedings.

Judicial proceedings may be preferable where the status of the registration forms only one part of a wider commercial dispute. A challenge based on bad faith, for example, may derive from a former distribution arrangement, agency relationship, joint venture, corporate conflict or failed negotiation. In such cases, the court may be required to examine contractual documents, correspondence, witness evidence and the commercial circumstances preceding the filing. The dispute may also involve claims concerning infringement, ownership, transfer, contractual liability or damages, subject to the applicable rules of jurisdiction and admissibility.

The distinction is particularly significant where the claimant requires relief extending beyond cancellation of the registration. OSIM cannot award damages, prohibit infringing conduct, determine contractual liability or order provisional measures. Where the commercial objective is to stop use of the sign, preserve evidence or obtain compensation, a registry-based decision may not resolve the dispute in its entirety.

Proceedings before the Tribunal also benefit from the full evidential mechanisms of the Romanian Code of Civil Procedure. This does not eliminate the need to define the case comprehensively at the pleading stage, but it may offer a more appropriate setting for factually complex disputes in which the parties disagree not only on the legal significance of documents but also on the underlying course of conduct.

Conversely, the formality and breadth of judicial proceedings may be disproportionate where the dispute concerns a discrete question of genuine use or a conventional conflict between registered rights. The existence of broader judicial powers does not, by itself, justify selecting the court if those powers have no practical relevance to the relief sought.

The evidential character of the dispute

The evidential burden will frequently determine the appropriate forum more persuasively than general assumptions concerning cost or duration.

In non-use proceedings, the burden of proving genuine use rests with the proprietor of the contested mark. The evidence must establish use during the relevant period, in Romania, in relation to the goods or services for which continued protection is claimed. The assessment is qualitative as well as quantitative. It concerns use consistent with the essential function of the mark and directed towards maintaining or creating a market for the relevant goods or services. Internal preparations, isolated transactions without commercial significance or evidence that cannot be connected to the registered proprietor and the relevant territory may be insufficient.

Use in a form differing from the registered mark may be accepted where the differences do not alter its distinctive character. Use by a licensee or another party with the proprietor’s consent may also accrue to the proprietor. These principles frequently require the evidence to be organised across corporate, contractual and commercial records rather than presented as a collection of invoices or promotional materials without an articulated relationship to the registration.

Invalidity proceedings based on an earlier trade mark may produce an additional proof-of-use issue. At the request of the proprietor of the contested mark, the applicant may be required to prove genuine use of the earlier mark during the five years preceding the invalidity application. Where the earlier mark had already been registered for the requisite period at the filing or priority date of the later mark, proof may also be required for the five years preceding that earlier reference date. Failure to establish the required use may defeat the invalidity claim, even where the signs and the relevant goods or services would otherwise support a finding of likelihood of confusion.

Cases concerning reputation require evidence capable of establishing the degree of recognition of the earlier mark among the relevant Romanian or EU public, depending on the right invoked. Market share, geographical scope, duration and intensity of use, advertising expenditure, distribution, media exposure and independent recognition may all be relevant. The probative value of such material depends upon its date, territorial connection and relationship to the precise mark relied upon.

Bad-faith claims are different in character. They require an overall assessment of the circumstances existing at the filing date, including the applicant’s knowledge, commercial relationship with the claimant, chronology of use, contractual restrictions and objective purpose in seeking registration. Because the inquiry concerns intention inferred from objective circumstances, the coherence of the factual record is generally more important than the volume of material submitted.

A specialist administrative forum may be well suited to disputes centred on the legal comparison of signs, specifications and registered rights. A judicial forum may be more appropriate where the outcome depends upon a contested commercial history or where evidence concerning contractual performance, corporate control or witness credibility is central. This is not a jurisdictional distinction imposed by the legislation; it is a matter of forensic suitability.

Coordination with infringement and commercial proceedings

A validity challenge should not be planned in isolation from the enforcement dispute to which it relates. The continued existence of the registration may determine the basis of an infringement action, an application for provisional relief, customs intervention, platform enforcement or contractual claim. At the same time, the commencement of parallel proceedings may introduce questions of suspension, res judicata and procedural coordination.

Where invalidity or revocation is invoked principally as a defence to infringement, separate proceedings before OSIM may fragment the dispute. The infringement court may have to consider whether its proceedings should continue before the status of the registration has been finally determined. Since an OSIM decision may itself be challenged before two judicial instances, the procedural consequences of such sequencing may extend beyond the initial administrative timetable.

The position is different where the principal objective is to remove a blocking registration before a market entry, filing programme or commercial transaction. In that context, a self-contained OSIM application may provide an appropriate mechanism, particularly where no damages, injunction or determination of contractual rights is required.

Potential settlement must also be considered. A challenge may form part of negotiations concerning coexistence, limitation of goods and services, assignment or withdrawal. The procedural route should preserve the ability to implement the contemplated settlement and to secure the necessary amendments to the register. Where the settlement concerns wider contractual obligations, court proceedings may provide a more suitable framework for addressing the consequences of non-performance.

Forum selection as part of trade mark strategy

The existence of parallel jurisdiction does not render OSIM and the Bucharest Tribunal interchangeable. The OSIM procedure offers specialist administrative adjudication directed specifically at the continued legal existence of the registration. Judicial proceedings provide a broader procedural setting and access to remedies that fall outside the competence of the Office.

A decision on forum should follow the legal and evidential architecture of the dispute. The decisive considerations include the ground of invalidity or revocation, the complexity of the factual record, the need for relief beyond alteration of the register, the relationship with infringement or contractual proceedings and the probability that the first-instance determination will be contested.

For international rights holders, linguistic and evidential preparation is particularly important. Documents intended for use before OSIM must be translated into Romanian, and evidence generated for proceedings in another jurisdiction may not address the territorial and temporal requirements of Romanian law. The forum decision should therefore be made before the evidential record is assembled, rather than after a case prepared for one procedural setting has proved unsuitable for the other.

Romania’s dual system provides parties with procedural choice, but that choice carries substantive consequences. The appropriate route is the one capable of resolving the actual controversy, not merely the formal status of the registration, within a coherent enforcement or defence strategy.

For advice on the appropriate forum and procedural strategy in a Romanian trade mark invalidity or revocation matter, please contact our team using the form below.