On accession, Community trademarks will be extended to the Romanian territory

Romania’s accession to the European Union will also have consequences as far as the protection of nationally registered trademarks is concerned. Under the accession rules, Community trademarks filed for registration before the date of accession (irrespective of whether they have been registered or not), shall automatically enjoy protection within the territory of Romania.

This mechanism operates de jure, without the need of the holder to fulfill any formalities or procedures carried out by OSIM that might show a conflict with a domestic trademark. For this reason, it is interesting to note that the trademark owner who felt safe as a holder of a registration certificate issued by OSIM may suddenly see his portfolio threatened by the “invasion” of Community trademarks automatically protected within the territory of Romania.

Thus, on accession to the EU, a domestic producer that has not previously exported his trademark to the EU area, and, therefore, was not in direct competition with the same or other similar trademarks registered in other Member States, may have to deal with (as part of the unique market) competing products bearing identical or similar EC-protected trademarks on the Romanian market.

Based on national law, the conflict would be solved in favour of the holder who was the first to register its right, and who could also ask for the cancellation of the subsequently registered trademark in court.

Based on the accession rules negotiated by Romania and the European Union, the holder of a national trademark previously registered in good faith would be allowed to oppose the use of the Community trademark on Romanian territory. The action may be filed before the competent Romanian courts of law in accordance with the provisions of Regulation 40/1994 on the Community trademark.

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