Trademark Registration in Romania (OSIM) vs. Trademark Registration in European Union (EUIPO)

In the legal sense established by national legislation and by European industrial property law, a trademark constitutes a sign capable of graphic representation that serves to distinguish the goods or services of one undertaking from those of other economic operators. Beyond its function of commercial individualization, the trademark is both an instrument of consumer protection and a genuine patrimonial asset of its proprietor, capable of being economically exploited through assignment, licensing, or contribution to share capital.

Against the background of European integration and the free movement of goods and services, the question arises, with particular relevance, whether an economic operator should seek national protection of its mark—through the State Office for Inventions and Trademarks (OSIM) – or rather opt for unitary protection across the entire territory of the European Union, via the European Union Intellectual Property Office (EUIPO). The choice between these two regimes is not a merely procedural matter, but rather a decision of strategic and legal importance, conditioning the potential for business expansion, the related costs, the risks of litigation, and the overall effectiveness of protection against counterfeiting.

A comparative assessment of the two systems requires reference to the applicable legal framework, the registration procedures, the official fees, the duration and scope of the protection granted, as well as the relevant case law of both national and European courts. Only through a detailed examination of these elements can a rational and commercially tailored decision be reached.

In Romania, the legal regime of trademarks is governed by Law No. 84/1998 on Trademarks and Geographical Indications, republished and subsequently amended by Law No. 112/2020, which transposed Directive (EU) 2015/2436 on the approximation of the laws of the Member States relating to trademarks. The statute is supplemented by the Implementing Regulation adopted through Government Decision No. 1134/2010, as amended. This normative framework sought to harmonize domestic procedures with European standards, simplify registration steps, and shorten procedural timeframes, thereby increasing predictability and administrative efficiency.

At the European Union level, the regime of the EU trademark is governed by Regulation (EU) 2017/1001 on the European Union trademark. The Regulation establishes uniform rules applicable in all Member States and enshrines the principle of unitary protection: an EU trademark produces effects throughout the entire Union and cannot be territorially restricted. Moreover, interpretation and application of the relevant provisions are constantly refined through the jurisprudence of the Court of Justice of the European Union (CJEU) and the General Court, which have set stringent criteria regarding distinctiveness, descriptiveness, and grounds for invalidity.

From a practical perspective, these two normative frameworks should not be regarded as mutually exclusive, but as complementary. The Romanian legislator has aligned national provisions with European standards, thereby facilitating the coexistence of national trademarks and EU trademarks. Furthermore, the Madrid Protocol, ratified by Romania, permits extension of protection at the international level, constituting a third option for proprietors seeking markets beyond Europe.

Trademark Registration Procedure and Scope of Protection

National Trademark: Registration before OSIM entails the filing of an application (online or in paper form), its publication, substantive examination on both absolute and relative grounds for refusal, and, ultimately, the issuance of a decision of acceptance or rejection. Oppositions may be filed by holders of prior rights within the statutory period, and OSIM’s decisions may be challenged before the competent courts. Protection is strictly territorial, limited to the boundaries of Romania.

European Union Trademark: Registration before EUIPO follows a similar pattern but has notable particularities. First, the effects of registration extend automatically to all Member States, with no possibility of territorial fragmentation. Second, examination of absolute grounds is conducted with reference to the perception of the average consumer throughout the Union, resulting in a more rigorous standard of distinctiveness. Finally, opponents may originate from any Member State, increasing the likelihood of opposition but simultaneously ensuring more robust protection in the event of registration.

Comparatively, registration with OSIM is more suitable for operators focusing on the domestic market, while EUIPO registration is the preferred instrument for undertakings engaged in commercial activities across multiple Member States or through cross-border online channels.

Costs and Duration of the Registration Procedure

In Romania, the official fees for national registration are significantly lower than at the European level. For instance, the official fee for registering a mark designating a single class of goods or services amounts to approximately RON 995, with an additional RON 249 for each extra class.

At EUIPO, the basic application fee is EUR 850 for one class, with surcharges as follows: EUR 50 for the second class and EUR 150 for each additional class from the third onwards.

In both systems, protection lasts for 10 years from the filing date and may be renewed indefinitely for successive 10-year periods, subject to payment of renewal fees. Non-payment results in loss of rights in the mark.

Grounds for Refusal of Registration

Both OSIM and EUIPO examine absolute grounds for refusal, including lack of distinctiveness, use of descriptive or generic terms, or elements contrary to public policy or accepted principles of morality. Relative grounds, based on prior identical or similar marks likely to cause confusion, are also considered, though only if timely oppositions are lodged.

The EUIPO applies a stricter standard. Distinctiveness is assessed in relation to consumer perception across all Member States, involving a multilingual and multicultural evaluation. Consequently, a sign regarded as distinctive on the Romanian market may be considered descriptive in another Member State and thus refused at Union level.

Case law illustrates this rigor. In T-436/23 Daimler Truck “CERTIFIED”, the General Court upheld EUIPO’s refusal on grounds of lack of distinctiveness. In Philip Morris “Sienna Selection”, it was held that color denominations registered as verbal marks were descriptive and devoid of distinctiveness. These examples demonstrate the higher acceptance threshold at the European level.

Comparative Advantages and Disadvantages

The national trademark offers lower costs and a more accessible procedure, being particularly suitable for enterprises operating exclusively in Romania. Its drawback lies in the limited territorial protection, which does not extend beyond national borders; expansion requires separate filings in each target country or reliance on international mechanisms such as the Madrid Protocol.

The EU trademark, by contrast, affords unitary protection throughout the Union, saving time and resources compared to multiple filings. It enables proprietors to combat unauthorized uses of their mark under a uniform legal regime and to capitalize on the mark on a European scale. However, the EU trademark entails higher initial costs and a greater risk of opposition or refusal, given that the sign must be distinctive across all Union languages. For strictly local operators, this may prove disproportionate.

Practical Decision-Making Criteria

Territorial Criterion: If activities are confined to Romania, OSIM registration suffices. For operations extending across several Member States or involving cross-border e-commerce, the EU trademark is preferable.

Financial Criterion: Where financial resources are limited, national protection represents the rational solution, with gradual expansion as circumstances permit.

Nature of the Sign: For marks containing descriptive elements, the likelihood of refusal by EUIPO is high; national registration is therefore advisable.

Temporal Criterion: If expansion is immediate, EU trademark protection is optimal; if only potential, national registration is a reasonable first step.

The choice between a national trademark and a European Union trademark is not universally valid but depends on the proprietor’s commercial objectives, financial resources, and development strategy. For local operators, OSIM registration offers effective protection at reduced cost.

The EU trademark, on the other hand, is an indispensable legal instrument for undertakings with a regional or European vocation, providing unitary protection, procedural economy, and enhanced legal force in cross-border disputes. The optimal strategy is a gradual one: initial national protection, followed by European or international extension when commercial circumstances so warrant.

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