Trademark Registration Procedure in Romania (OSIM)

A trademark is a distinctive sign that can be graphically represented and serves to identify and distinguish the goods or services of one company from those of others. This can include words (including personal names), designs, and graphic elements such as logos or symbols, letters, and numbers used distinctively, three-dimensional shapes such as the shape of a product or its packaging, colors and color combinations specific to a brand, holograms, and sound marks such as sounds or music used in advertisements, as well as any combination of these elements.

These signs must allow consumers to differentiate the products or services of one business from those of others. The right to a trademark is acquired and protected by registering it with OSIM, EUIPO, or WIPO.

OSIM (The State Office for Inventions and Trademarks) is the authority responsible for the registration and protection of trademarks in Romania. At the European level, registration is handled by EUIPO (European Union Intellectual Property Office), and for international protection, registration is done through WIPO (World Intellectual Property Organization). Registering a trademark with one of these institutions grants exclusive rights to its use and protects the trademark from unauthorized use by third parties.

Trademarks can be refused registration or declared null for the following absolute grounds. Trademarks lacking distinctive character or consisting solely of customary signs or indications in the common language or fair and established commercial practices can be refused.

Trademarks composed exclusively of signs or indications designating the type, quality, quantity, purpose, value, geographical origin, or the time of production of the goods or rendering of the services, or other characteristics of these, are not accepted. Trademarks consisting exclusively of the shape of the product, determined by its nature, necessary to obtain a technical result, or giving substantial value to the product, can be refused.

Trademarks likely to mislead the public regarding the geographical origin, quality, or nature of the product or service are refused. If trademarks contain a geographical indication for products not originating from the indicated territory that could mislead the public, they are not accepted.

Trademarks that conflict with public order or accepted principles of morality are also refused. The image or name of a renowned person in Romania, used without their consent, is prohibited in registered trademarks.

Trademarks reproducing or imitating state emblems, flags, state emblems, signs, official seals of control and guarantee, or coats of arms belonging to EU countries, or trademarks reproducing or imitating emblems, logos, initials, or names of international intergovernmental organizations without the authorization of the competent authorities are refused.

Additionally, trademarks containing signs with high symbolic value, especially religious symbols, are not accepted. Finally, trademarks containing badges, emblems, coats of arms, heraldic signs, other than those covered by the Paris Convention, without the authorization of the competent authorities, are refused.

The right to a trademark belongs to the applicant who first filed the application for registration of the trademark, according to the law. The applicant must specify the goods and services for which trademark protection is sought with sufficient clarity and precision to allow the competent authorities and economic operators to determine the extent of the protection sought.

The goods and services for which trademark registration is requested are classified according to the classification system established by the Nice Classification. They are grouped into classes, and each group of goods or services is preceded by the number of the class to which it belongs, in the order of the classes.

The registration of the trademark takes effect from the date of filing the trademark application with the relevant intellectual property office and is valid for a period of 10 years. At the request of the holder, the registration of the trademark can be renewed an unlimited number of times, at the expiration of each 10-year term, subject to the payment of the renewal fee.

After the trademark has been registered, throughout the period during which the trademark is protected, the holder can request the intellectual property office to modify the elements of the trademark, but these modifications must be minor. These modifications must not significantly change the way the trademark is perceived or the way consumers distinguish the products or services. However, the list of goods and services for which the trademark is registered can be reduced at any time but cannot be extended through these modifications.

The rights to a trademark can be transferred through various legal means, such as assignment, licensing, merger, succession, by court order, or through other methods provided by law for the transfer of property. Additionally, the forced execution of the debtor, the holder of the trademark, by the creditor is considered a form of transfer of rights according to the law.

Registration of a trademark with OSIM (The State Office for Inventions and Trademarks) offers protection limited to the national territory of Romania. This process allows the trademark holder to protect their rights within the Romanian domestic market, with the possibility to prohibit any other person from unauthorized use of their trademark in the country.

The registration of a trademark with EUIPO provides protection in all 27 member states of the European Union, which offers extensive protection for the trademark, ensuring access to one of the largest commercial markets in the world. This means that the holder of the registered trademark can conduct business activities without worrying about unauthorized use of their trademark in any of the member states.

Additionally, registering the trademark with WIPO (World Intellectual Property Organization) can provide extended protection in various states worldwide, depending on the international treaties to which the respective countries are parties. This allows the trademark holder to obtain protection in multiple international jurisdictions, which is crucial for companies looking to expand their presence and protect their trademarks globally.

After obtaining the trademark registration certificate from OSIM or other similar organizations, it is advisable to closely monitor the market to identify and prevent unauthorized use of the registered trademark by others. Constant monitoring of similar trademarks is important because it allows for prompt action if someone attempts to use a trademark that is too similar to the registered one.

This ensures protection against creating confusion among consumers and diluting the trademark’s value in the market. Protecting the trademark after registration also requires vigilance in ensuring the correct use of the trademark. The trademark must be used in the form in which it was registered to avoid the risk of losing exclusive rights to the trademark.

Collaborating with an authorized industrial property advisor can be helpful in monitoring the market and taking prompt legal action if it is necessary to protect the trademark against unauthorized use. Monitoring and protecting the trademark not only ensures the integrity and reputation of a business but also helps to capitalize on investments in the development and promotion of the trademark in an efficient and sustainable manner.