Transfer of Trademark Rights: Assignment, Licensing, Merger, Succession, Court Ruling

In accordance with current legislation, trademark rights can be transferred through various means: assignment, licensing, merger, succession, court ruling, or any other legal method for transferring ownership rights. The enforcement of a debt against a trademark holder is also considered a form of rights transfer if carried out according to the law. Additionally, for trademarks involved in litigation, the registration of rights transfer is suspended until the final court decision is issued.

Trademark rights can be transferred through assignment, independent of the transfer of the commercial enterprise in which the trademark is incorporated. The assignment must be in writing and signed by the contracting parties, under the penalty of nullity, except in cases where it results from a court ruling or the fulfillment of contractual obligations.

The assignment can be complete or partial, but it cannot territorially limit the use of the trademark for the products or services it covers. If the trademark holder’s entire estate is transferred, the transfer includes the trademark rights unless otherwise stipulated or clearly indicated by circumstances. The transfer of certain elements from the holder’s estate does not affect their status as the trademark owner. Identical or similar trademarks of the same owner, used for identical or similar products or services, cannot be transferred through assignment except in their entirety and to a single person, under the penalty of nullity of the transfer act.

The application for the registration of an assignment must include information identifying the trademark, the new owner, the products and/or services the assignment refers to, and be accompanied by proof of the change of ownership. OSIM (State Office for Inventions and Trademarks) may refuse to register the assignment if it clearly misleads the public regarding the nature, quality, or geographical origin of the products or services for which the trademark was registered, except if the assignee agrees to limit the assignment to non-misleading products or services.

The assignment application is published in the Official Bulletin of Industrial Property and becomes enforceable against third parties from the date of publication. If the application does not meet the necessary conditions, OSIM informs the applicant within 30 days, giving them two months to correct the deficiencies. In the case of a partial assignment, any pending application filed by the initial owner remains valid for the resulting trademark from the partial assignment, without requiring additional fees.

The trademark owner can authorize third parties to use the trademark in Romania or parts thereof, for all or some of the products or services for which the trademark was registered, through a license agreement, which can be exclusive or non-exclusive. The trademark owner can invoke the trademark rights against the licensee if the latter breaches the license agreement terms.

During the license contract, the licensee must use only the trademark covered by the contract and indicate that it is used under license. Licenses are recorded in the Trademark Register, published in the Official Bulletin of Industrial Property, and become enforceable against third parties from the date of publication. The absence of license registration does not affect the validity of the trademark registration or the protection of the license and does not prevent the use of the trademark by the beneficiary from being considered equivalent to the owner’s use.

A trademark can be the subject of a real right or enforcement measures, independent of the enterprise. The registration of real rights and enforcement measures in the Trademark Register is done at the request of the interested party, accompanied by supporting documents and the payment of legal fees. If the trademark holder enters insolvency proceedings, OSIM notes this in the Trademark Register at the request of any interested party.

The provisions regarding the transfer of trademark rights also apply to trademark registration applications. Registrations in the Trademark Register can be modified or canceled, with the payment of legal fees, at the request of the interested party, accompanied by the appropriate supporting documents.