Trademark Opposition Procedure before the Romanian PTO (OSIM)

An application for trademark registration, once accepted, shall be published in the Official Bulletin of Industrial Property in electronic format for the purpose of filing oppositions. Within two months from the date of publication of the allowance to registration of the trademark application, any interested party may file an opposition to the registration of the trademark on the grounds for refusal provided by law.

The opposition must be submitted in writing, include the legal grounds and reasons upon which it is based, and be accompanied by proof of payment of the prescribed fee. The opposition may be based on one or more prior rights, provided that all rights invoked belong to the same holder.

At the applicant’s request, the holder of an earlier trademark who has filed the opposition must submit to OSIM evidence that the earlier trademark has been genuinely used in Romania during the five-year period preceding the filing date or priority date of the contested trademark application or provide justified reasons for non-use. These provisions apply if the earlier trademark was registered at least five years before the filing date or priority date of the contested trademark application.

The opponent must present evidence of use within two months of receiving the notification from OSIM, failing which the opposition will be rejected. If the earlier trademark is a European Union trademark, genuine use is determined in accordance with Article 18 of the EU Trademark Regulation.

If the earlier trademark has been used only for some of the goods or services for which it was registered, it shall be considered registered only for those goods or services for the purposes of the opposition. If the conditions set forth are not met, the opposition is considered not to have been made.

OSIM shall notify the applicant of the trademark registration application of the opposition filed, granting a two-month period for an amicable settlement. At the joint request of the parties, this period may be extended by up to three months. If the parties do not reach an agreement within the given period, OSIM shall notify the opponent, granting a 30-day period to present evidence and arguments in support of the opposition.

OSIM shall communicate to the applicant the documents submitted in support of the opposition and grant the applicant a 30-day period to present their observations on the opposition grounds. In the absence of the applicant’s observations, the opposition shall be decided based on the existing documents in the file. Evidence of use submitted in accordance with the provisions of Article 26(4) shall be communicated to the applicant, who may present their observations within 30 days from the communication. The opposition shall be resolved based on the arguments and documents submitted by the parties, respecting the deadlines granted by OSIM.

The documents submitted in the opposition procedure shall be presented in as many copies as necessary for communication, plus one copy for OSIM. The opposition to the registration of a trademark is decided by a committee within the OSIM Trademarks and Geographical Indications Service. Within no more than two months from the expiration of the period provided by law, as the case may be, the committee shall issue a reasoned decision on the opposition, which shall be communicated to the parties within 30 days from its issuance and may be appealed.

The opposition procedure may be suspended in the following cases: when it is based on a trademark application, until a final decision regarding its registration is made; when there is evidence that the opposed trademark is subject to cancellation or revocation proceedings, until the final resolution of the case. The reasoned decision to suspend the opposition shall be communicated to the parties and may be appealed within 30 days from the communication.

During the suspension, either party may request the resumption of the opposition resolution if the reason for the suspension no longer exists. The applicant may at any time withdraw the trademark application or limit the list of goods or services. If the application has already been published, the withdrawal or limitation shall be published in the Official Bulletin of Industrial Property.

The trademark application may be amended, at the applicant’s request, only for the rectification of the applicant’s name or address, for correction of errors of expression or transcription, or for obvious mistakes, provided such corrections do not substantially alter the trademark or extend the list of goods or services. If such amendments affect the representation of the trademark or the list of goods or services and are made after publication, the application shall be republished as amended.

Any amendment requested by the applicant that substantially affects the trademark or the list of goods or services must be subject to a new trademark application. OSIM shall enter in the Trademark Register those trademarks allowed to registration for which the registration procedure has been completed and shall issue the registration certificate upon payment of the legal fee within 30 days from the notification to the holder of the completion of the registration procedure.

The date of completion of the registration procedure shall be entered in the register. The registration procedure is considered completed on the date on which the accepted trademark application can no longer be opposed, or if an opposition has been filed, on the date on which the decision on the opposition becomes final or the opposition has been withdrawn.

These provisions also apply to international trademark registration applications. If the legal fee is not paid within the prescribed period, the holder is deemed to have abandoned the trademark registration. The abandonment is recorded in the Trademark Register and published in the Official Bulletin of Industrial Property. Trademarks entered in the Trademark Register shall be published in the Official Bulletin of Industrial Property, and the Trademark Register is public.