Grounds for Trademark Registration Refusal by the Romanian PTO (OSIM)

Absolute Grounds for Refusal

Absolute grounds pertain to the fundamental aspects of the trademark itself, independent of other existing trademarks. These grounds focus on the intrinsic characteristics of the proposed trademark and its compliance with the legal rules and norms for trademark registration. They do not depend on the existence of other similar trademarks but rather on the proposed trademark’s compatibility with general legal requirements.

Primarily, the absolute grounds for refusal include the following aspects:
a) Signs that cannot distinguish the goods or services of one enterprise from those of other enterprises or cannot be represented in the Trademark Register in a manner that allows competent authorities and the public to clearly and precisely determine the subject of protection granted to their holder;
b) Trademarks that lack distinctive character;
c) Trademarks composed exclusively of signs or indications that have become customary in the current language or in the established practices of the trade;
d) Trademarks composed exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or rendering of the service, or other characteristics of these;
e) Signs consisting exclusively of the shape of goods or another characteristic dictated by the nature of the goods, necessary to obtain a technical result, or which gives substantial value to the goods;
f) Trademarks that are likely to deceive the public, for instance, regarding the geographical origin, quality, or nature of the goods or services;
g) Trademarks excluded from registration under the provisions of European Union legislation, national legislation, or international agreements to which the European Union or Romania is a party, which provide for the protection of designations of origin and geographical indications;
h) Trademarks excluded from registration under European Union legislation or international agreements to which the European Union is a party, which provide for the protection of traditional terms for wines;
i) Trademarks excluded from registration under European Union legislation or international agreements to which the European Union is a party, which provide for the protection of guaranteed traditional specialties;
j) Trademarks that consist of or reproduce in their essential elements an earlier denomination of a plant variety, registered in accordance with European Union or national legislation or international agreements to which the European Union or Romania is a party, which grants protection to rights over a plant variety and refers to plant varieties of the same species or closely related species;
k) Trademarks containing, without the consent of the holder, the image or patronymic name of a person renowned in Romania;
l) Trademarks containing signs with high symbolic value, especially a religious symbol;
m) Trademarks contrary to public policy or accepted principles of morality;
n) Trademarks that include, without authorization from the competent authorities, reproductions or imitations of armorial bearings, flags, other emblems of state, official signs and hallmarks indicating control and warranty, coats of arms, belonging to the European Union countries and which fall under Article 6ter of the Paris Convention;
o) Trademarks that include, without authorization from the competent authorities, reproductions or imitations of armorial bearings, flags, other emblems, abbreviations, initials or names that fall under Article 6ter of the Paris Convention and belong to international intergovernmental organizations to which one or more EU countries are members;
p) Trademarks containing, without authorization from the competent authorities, badges, emblems, insignia, coats of arms, heraldic signs of public interest, other than those covered by Article 6ter of the Paris Convention.

A trademark is not refused registration or, as the case may be, its registration is not annulled if, before the filing date of the registration application or before the date of the cancellation request, the trademark has acquired distinctiveness through use.

Relative Grounds for Refusal

Relative grounds for refusal arise in the context of the existence of prior registered trademarks. These grounds consider the potential conflict between the proposed trademark and existing trademarks:
a) If it is identical to an earlier trademark, and the goods and services for which the trademark is applied for or registered are identical to those for which the earlier trademark is protected;
b) If, because of its identity or similarity with an earlier trademark and the identity or similarity of the goods or services covered by the two trademarks, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark.

Earlier trademarks include EU trademarks, trademarks registered in Romania or under international agreements effective in Romania, whose filing date is earlier than the filing date of the trademark registration application or, as the case may be, the priority right claimed. It also includes EU trademarks where seniority is validly claimed according to the EU Trademark Regulation, even if that trademark has expired or been surrendered, trademark registration applications filed with the intellectual property office under the condition of subsequent registration, and trademarks that are well-known in Romania on the filing date of the trademark registration application or, as the case may be, on the priority date claimed under Article 6bis of the Paris Convention.

A trademark is also refused registration or, if registered, is liable to be canceled if:
a) It is identical or similar to an earlier registered trademark in Romania or the EU, regardless of whether the goods or services for which it is applied for or registered are identical, similar, or not similar to those for which the earlier trademark is registered, when the earlier trademark has a reputation in Romania or, in the case of the EU trademark, has a reputation in the EU, and if the use of the later trademark would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trademark without due cause;
b) There is an application for registration of a designation of origin or a geographical indication submitted in accordance with national or EU legislation before the filing date of the trademark application or the priority date claimed in support of the application, subject to its subsequent registration, and the designation of origin or geographical indication grants the authorized user the right to prohibit the use of a subsequent trademark in Romania;
c) There is a sign on which rights were acquired prior to the filing date of the trademark application or, if applicable, before the priority date claimed in support of the trademark application and which gives its holder the right to prohibit the use of a subsequent trademark in Romania;
d) Its registration is applied for by the agent or representative of the trademark owner, in their own name and without the trademark owner’s consent, except where the agent or representative justifies their action;
e) There is an earlier right, other than those mentioned above, in particular a right to a name, a right to an image, a copyright, an industrial property right;
f) The trademark may be confused with an earlier trademark protected abroad, provided that, at the date of filing the application, the applicant acted in bad faith.

A trademark is not refused registration or, as the case may be, is not liable to be canceled when the holder of an earlier right consents to the registration of the later trademark.

The nature of the goods or services for which the trademark registration is sought does not constitute an obstacle to its registration. When there are grounds for refusing the registration of a trademark only for part of the goods or services for which the trademark was applied for, the refusal of registration covers only those goods or services.

Our industrial property counselors, duly authorized by the OSIM, and members of the CNCPIR, are available for any additional information regarding relevant aspects of the trademark registration process in Romania (OSIM), at the European Union level (EUIPO), or internationally (WIPO).