As a "first to file" jurisdiction, Romania requires trademark registration before granting rights to a mark. In order to register a trademark in Romania, one can do so either locally through the OSIM (Romanian State Office for Inventions and Trademarks) or regionally through the filing of an EUTM, which provides protection across the whole European Union. Additionally, Romania is a signatory to the Madrid Protocol. As a result, this nation is able to extend an international trademark registration under the Madrid System.

When a combination trademark (one that has both word and figurative features) is registered in Romania, the owner only has the exclusive right to use the mark in the same way that it was submitted and registered. It is advised that you file for a different trademark that only includes the word or figurative features you intend to use and protect separately. This is true if you wish to use the word element of your trademark separately from the logo (or vice versa).

However, you will have the right to oppose the application on the grounds of confusing similarity if a third party subsequently wants to register or use a trademark for comparable goods or services that includes a primary or separate component or portion of your trademark. Within two (2) months of the trademark application's publication, third parties may bring opposition actions against it. Depending on the specifics of each situation, many conditions will affect the odds of an opposition's success.

A trademark does not have to be in use in Romania to be registered there. It must, however, be used at least once every five (5) years or it will be subject to cancellation due to inactivity. To prevent this, just little use is required. Registered trademarks in Romania are valid for ten (10) years following the application date. They can then be extended indefinitely for subsequent ten-year periods. Within the three (3) months before the expiration date, the trademark renewal request may be made.

Please get in touch with us directly to find out if we would be able to provide this service in this country if you would like the figurative or design components of your trademark to be taken into account when assessing your trademark for registration in Romania (Trademark Assessment Report). Prices for services and anticipated delivery times may change in such circumstances.

Fees

Search costs: First class- $100.00; subsequent classes: $80.00

There is no way to look up a trademark's figurative components (logo). Only the linguistic components of the trademark will be searched for.

Cost of applications: First class is $1,140.00; each subsequent class costs $460.

After the trademark is approved, the remaining registration fee is due: First class is $220; subsequent classes are each N/A.

Process

Check for trademark availability-

The successful exploitation of IP rights requires efficient protection and enforcement. Therefore, from the very beginning of their company's existence, business owners should make an effort to choose and preserve their brand appropriately. To minimize expenses and harm caused by potential disputes with holders of prior rights, it is essential to start using the chosen brand immediately after getting its trademark protection.

Once a brand idea has been developed, a trademark availability search should be done in the regions where the company already offers, or wants to offer in the future, its products and services. This makes sure that the chosen brand can be used and registered as a trademark in those areas in relation to the pertinent goods and services.

Identical or similar earlier trademarks seeking or enjoying protection for identical or similar goods and/or services in Romania, including-

• National registered trademarks and trademark applications;
• EU-registered trademarks and trademark applications; and
• Internationally registered trademarks that have been used in Romania, should be examined in the relevant online databases if the business owner wishes to seek trademark protection in Romania.

Although Romania is a first-to-file jurisdiction, it is nonetheless advised to conduct an Internet search for the candidate mark in relation to identical or similar goods and/or services in order to find any possible inconsistencies in the mark's past usage on the Romanian market. An evaluation of the potential hazards related to the use of the proposed mark and the likelihood of its successful registration in Romania is made easier with an overview of the pertinent findings of a trademark clearance search conducted in this way. It also enables the brand owner to develop a plan for reducing such risks and boosting success rates.

Application for trademark filing-

The Law No. 84/1998 on Trademarks and Geographic Indications, as Republished, governs the trademark registration process in Romania (the Romanian Trademarks Law). The terms of the EU Trademarks Directive were transposed into the new law, which became effective in July 2020. (1) Significant modifications are made to the procedures for trademark registration in Romania as a result of the new requirements of the Romanian Trademarks Law.

After choosing a brand, brand owners can submit a trademark application to the Romanian State Office for Inventions and Trademarks (the Office). Applications must include the following information-

• A representation of the mark;
• A list of the goods and/or services for which protection is sought (in accordance with the applicable Nice Classification);
• Proof of payment of the official fees for filing and publishing the application; and,
• If applicable, a signed power of attorney.
• Applications may be submitted in paper format or electronically through the Office's e-filing platform.

Fees for registering a trademark include-

The official costs connected with registering a national trademark in Romania vary according to the type of trademark (i.e., whether it is a word or figurative mark, whether it is in colour or black and white), and the quantity of classes of goods/services specified in the application.

The following are the legal costs in 2022 for registering a national trademark in one class, from filing to registration-

• A word mark costs €200,
• A black-and-white figurative mark costs €230, and
• A colour figurative mark costs €380.

These fees do not include the official fees that would be charged for exercising a priority right, but do include the official fee for the issuing of the registration certificate, which is paid at the conclusion of the registration process. The official cost for each additional class will be €50 if the trademark application defines items or services in more than one category. Foreign applicants must pay fees in euros, whereas Romanian applicants must pay fees in their country's currency (Romanian leu).

Application review for trademarks-

The trademark application is considered within seven days of the filing date after it is submitted to the Office. If nothing needs to be fixed and it complies with all legal requirements, it will be published in the first part of the Official Bulletin. Any interested person may submit written observations on absolute grounds for a two-month period beginning with the initial publication in the Official Bulletin. Written observations from third parties are not considered evidence in the Office's proceedings; nonetheless, the applicant is informed of these views and has the right to respond to any concerns made.

Following the completion of the substantive assessment of the trademark application, the Office will issue its judgment based on the legal absolute grounds for refusal within six months of the Official Bulletin's publication. The Office will ask the applicant to submit a declaration, within 30 days as of the date of notification, stating that no exclusive rights are invoked in connection with such non-essential element of the trademark, if the element lacks any distinctive character and is likely to raise questions about the scope of protection sought. The disclaimer will be made public as soon as the trademark application is approved. In reality, the applicant may submit reasons in response during the same period as filing the disclaimer if it disagrees with the examiner's notice. However, if the examiner persists with their request, the trademark application will either be partially approved or rejected if the requested disclaimer is not included. Disclaimers cannot be filed or requested for all the linguistic components of the mark.

Furthermore, if the trademark application does not satisfy the prerequisites for registration listed in the absolute grounds for refusal, the Office may issue provisional refusals during the substantive examination. Applicants who receive provisional rejection notices have 30 days to file a response or withdraw their application. If the associated official fees are paid, this term may be extended for an additional 30-day period. The applicant may appeal this decision before the Office's Appeals Committee within 30 days of the date of notification if the refusal is upheld and the examiner issues a final refusal decision on absolute grounds.

Application opposition to trademarks-

In the second section of the Official Bulletin, granted trademark applications are additionally published for third-party objection. Within two months of the second publication of the submitted application in the Official Bulletin, interested parties may object to the registration based on the relevant legal reasons for denial. Throughout the assessment process, the Office does not conduct an ex officio examination of related grounds for denial.

The applicant and the opponents both receive opposition notices that adhere to the legal criteria (i.e., including the legal provisions cited, earlier rights asserted, and a brief justification). Both sides are made aware that there is a two-month window for negotiating a potential amicable resolution of the opposition (informally referred to as the "cooling-off" period in practice). This time frame may be extended once more at the mutual request of the parties for a maximum of three months.

If the parties are unable to come to an agreement during the cooling-off period, the opponent will have 30 days to provide the applicant with arguments and supporting documentation to support their opposition. Within 30 days of receiving an official notice from the Office regarding the opponent's substantiated arguments and supporting evidence, the applicant may respond to the opponent's arguments.

The applicant may ask for evidence of genuine use of the earlier rights in the relevant territory if the earlier rights invoked in the opposition are susceptible to non-use (i.e., if they were registered more than five years prior to the filing date of the subsequent trademark application or the priority date invoked by the subsequent trademark application) (i.e., Romania or the European Union). The applicant will also be informed of this and given 30 days to respond to the Office's message. The opponent must submit this proof to the Office within two months after the Office's request to that effect. The opposition will be rejected without a review of its merits if there is no proof of actual use.

In accordance with the law, the Office must decide on the opposition procedure within two months of the conclusion of the adversarial stage and notify the parties of that decision within 30 days. However, due to the backlog of cases the Office is currently handling, these terms are frequently extended in practice. Within 30 days after the date of communication, the Opposition Committee's decision may be appealed to the Office's Appeals Committee.

Final steps in trademark registration-

• Once a trademark application can no longer be opposed, or, if an opposition has been filed, once the decision regarding that opposition has become final, a trademark registration is considered complete. Within 30 days after the date on which the registration process is deemed complete, the legal fees for the issuing of the registration certificate must be paid. The Office typically notifies the applicant or its agent of this date, but the aforementioned costs may also be paid voluntarily, in advance of receiving the Office's notice in this regard.
• Certificates are often issued within a month or less of the final registration costs being received. The Office exclusively issues paper certifications; no electronic certificates are ever issued.
• Provided there are no preliminary refusals or third-party oppositions, which would result in a substantially longer process, the overall time for a national trademark registration in Romania is about nine months from the date of filing (at least one year).
• After obtaining trademark protection, trademark owners are advised to keep an eye out for any unauthorized third-party use of their trademarks or similar signs in the relevant territories, as well as any subsequent identical or similar trademark applications filed for identical or similar goods in Romania. This is because the Office does not monitor subsequent identical or similar third-party applications or raise ex officio refusals on related grounds. To protect their intellectual property rights, brand owners should take proactive measures against any potential infringement.