The Harmonisation Directive contains two types of provisions: a first group that should be implemented by member states of the EU by mid-January 2019 and a second group that should be implemented by member states of the EU by mid-January 2023.
This is an opportunity for member states to amend their trade mark laws beyond the mandatory amendments set by the directive.
In Romania, for the first time ever, key stakeholders are actively participating in the amendment process of the law connected to industrial property.
The Romanian Patent Attorney Chamber (CNCPIR) was the initiator of the dialogue between various interested parties when, in January 2018 pressure was put on the Romanian Patent Office to start discussing the draft of the amendments prepared by the Patent Office. Between January 2018 and the beginning of April 2018, the working group met twice and various informal emails were exchanged. A public presentation of the draft took place during a conference.
Procedures for revocation and invalidity
According to the Harmonisation Directive, member states should implement necessary steps so that the procedure for revocation or declaration of invalidity is administrative rather than judicial until mid-January 2023. The rationale for such change is that administrative proceedings are cheaper and shorter than judicial proceedings.
In Romania, under current law, both invalidity and revocation are judicial proceedings, taking place before the Municipal Court of Bucharest as a first instance court.
Changing the type of proceedings from judicial to administrative is not an easy task for various reasons:
- Although considered administrative, the steps of the procedures for revocation and invalidity will continue to be very similar to the court ones involving lodging of the claim, summoning the parties, organisation of the hearings and taking of the decision. The code of civil procedure shall continue to be applicable in addition to the special provisions set by trade mark law. The new law and its corresponding regulations must take into account this major change.
- The Patent Office will require trained people and additional space for hosting the proceedings, including courtrooms.
- The transitory provisions must be carefully established, taking into account the complexity of the cases and the links between various cases.
For these reasons, it is better to postpone as much as possible the entry into force of the transference of the proceedings from the court to the Patent Office for invalidity and revocation.
Reimbursement of trial costs
Under present law, there are no provisions for reimbursement of trial costs for opposition and appeal proceedings. When it comes to revocation and invalidity, it is up to the claimant to request reimbursement or not and, if he does request it, it is up to the court to grant it or not. It is not commonplace to request reimbursement of trial costs for oppositions and appeals.
The proposals for the new law deal with the possibility of requesting such reimbursement for all types of procedures: opposition, revocation and invalidity. This should limit, in theory, the number of procedures that abuse the system.
Currently there are two diverging opinions:
- Some practitioners are of the opinion that there should be a ceiling at least for the costs of opposition procedures, just like in the opposition proceedings before the EUIPO, and this ceiling can be updated regularly. This would enable both parties to foresee costs and would prevent abuses.
- Other practitioners argue that sometimes opposition cases can be more difficult than revocation and invalidity cases, thus the winner should be entitled to obtain more costs than those dictated by a ceiling. They are of the opinion that the body in charge of ruling the case should decide on the amount to be reimbursed, thus no ceiling is required.
- The officers of the Patent Office are, in principle, in favour of not establishing a ceiling;
Simplification of the procedure
Currently the procedure from application to registration contains many hurdles that result from the application of the law regarding fees.
The law relating to fees offers the possibility of paying the examination fee at a later date than the date of filing, with the option of postponing date of payment. Currently, in many cases, the application is published, oppositions are lodged, but the applicant does not pay the examination fee and the mark is withdrawn. However, the Patent Office has significant delays in notifying the opponent that the opposition no longer has an object.
Trade mark attorneys propose grouping all the fees related to the application into one single fee, payable at the application date with one grace period of one month and with no possibility of deferring the payment beyond this date
Yet another hurdle results from the absence of any punishment for the failure to pay the registration fee. A normal registration procedure should end with the applicant paying the registration fee and the certificate being issued. The date from which the grace period for use starts is calculated from the moment when registration formalities are finished and the registration fee paid. In the absence of payment of the registration fee, the registration procedure is not finished so it is difficult to calculate the grace period. This gives rise to contradictory interpretations in court decisions. On the other hand, the mark is in force and can be enforced, even if the registration fee is not paid.
Trade mark attorneys propose grouping all the fees related to the application into one single fee, payable at the application date with one grace period of one month and with no possibility of deferring the payment beyond this date. This would require modifying the law regarding fees, possibly not regarding amounts, but with respect to the deadlines for payment.
Practitioners are in favour of granting a short term to the applicant for payment of the registration fee. In the absence of the fee, the mark should be deemed withdrawn. This would also apply as a transitory provision for all marks registered before the entry into force of the new law when registration fees are not paid by the applicant.
By tradition, opponents do not enter into many discussions with applicants and the case is decided by the Patent Office. Of course, some foreign opponents and applicants who have a culture of entering into negotiations with each other for the purpose of an amicable settlement of the opposition, do initiate such proceedings, but they do not constitute the majority.
New law will introduce a cooling-off period for opposition proceedings. Practitioners hope to educate Romanian companies to use this alternative to the administrative procedure.
Will the new law really work?
In my opinion, the unprecedented cooperation between stakeholders will lead to a law closer to the aims of the Harmonization Directive which are to increase legal certainty and stability (Recital 36).
However, I have some doubts about the new law that are related to the wording of the Harmonization Directive. Below is a short explanation of the doubts.
The Harmonization Directive is to be implemented into national law, which means that, in practice, in many cases the states will simply translate its provisions and include them in national trade mark laws. Romania is no exception to this rule.
My doubts relate to the obvious contradiction between the principle of do-it-yourself when it comes to protection of trade marks and the complicated wording of the directive. There is a tendency at the level of national offices of the EU and at the level of the EUIPO to promote the idea that applicants and holders have a sufficient degree of knowledge to manage the process of application themselves and do not need to spend time and money looking for a specialised attorney.
The directive contains too many articles where the phrase is drafted with the verb in the negative. This is combined with the use of the conditional –would or could- which makes it very difficult to understand the content.
Let us take a look at some examples:
Recital 30. In order to ensure legal certainty and safeguard legitimately acquired trade mark rights, it is appropriate and necessary to provide that, without prejudice to the principle that the later trade mark cannot be enforced against the earlier trade mark, proprietors of earlier trade marks should not be entitled to obtain refusal or invalidation or to oppose the use of a later trade mark if the later trade mark was acquired at a time when the earlier trade mark was liable to be declared invalid or revoked, for example because it had not yet acquired distinctiveness through use, or if the earlier trade mark could not be enforced against the later trade mark because the necessary conditions were not applicable, for example when the earlier mark had not yet obtained a reputation.
Let us try to understand the idea expressed:
The recital refers to a guiding rule that, in certain situations proprietors of earlier trade marks should not be entitled to take action against the later trade mark. At this stage, matters are clear. What are the particular situations? The answer is if the later trade mark was acquired at a time when the earlier trade mark was liable to be declared invalid or revoked. The phrase "was liable to" makes reference to a potential action in the past where a potential competent authority (the Patent Office or the court depending on the jurisdiction) delivered a potential final decision invalidating or revoking the earlier mark. For an experienced practitioner, it is clear that not all invalidation or revocation claims directed against one mark are successful. All countries have examples of different decisions given in very similar situations. Therefore how can one be 100% sure, say in the year 2019 when the directive is already transposed into national legislation if the earlier trade mark was indeed liable to be declared invalid or revoked in the past?
Now comes the second source of uncertainty: when in the past? The directive says "at a time when the earlier trade mark was liable to be declared." The word "time" is not defined in the directive, nor can it be precisely defined. Ironically an article that aims to bring more certainty is littered with uncertainties.
Article 18(1) In infringement proceedings, the proprietor of a trade mark shall not be entitled to prohibit the use of a later registered mark where that later trade mark would not be declared invalid pursuant to Article 8, Article 9(1) or (2) or Article 46(3).
Article 18(2) In infringement proceedings, the proprietor of a trade mark shall not be entitled to prohibit the use of a later registered EU trade mark where that later trade mark would not be declared invalid pursuant to Article 53(1), (3) or (4), 54(1) or (2) or 57(2) of Regulation (EC) No 207/2009.
Article 8 An application for a declaration of invalidity on the basis of an earlier trade mark shall not succeed at the date of application for invalidation if it would not have been successful at the filing date or the priority date of the later trade mark for any of the following reasons…
Example 2 is far from being clearer. The articles quoted above refer to a potential invalidation decision in the past relating to the later trade mark for reasons described in other articles.
How can one be sure that the later trade mark would not be declared invalid? How can one be sure that an application for invalidation would not have been successful at the filing date or the priority date of the later trade mark?
To conclude, in my opinion articles of this type, when transposed into national legislation, will probably create many interpretation problems.
As a closing remark, a change is never wholly positive or wholly negative. We should be grateful for the positive changes at the same time as taking measures to adapt to the negative ones.
||Raluca Vasilescu is a patent and trade mark attorney at Cabinet M Oproiu, which she joined in 1996; she qualified as a European patent attorney in 2003. She is the author of the Romanian chapter in the Vrins/Schneider book “Enforcement of Intellectual Property Rights through Border Measures” published by Oxford University Press in 2012 and a contributor to Haselblatt book of commentaries on the EU Trade Mark Regulation published by C H Beck Hart Nomos in 2015.