RESTRICTED WORLD TRADE
ORGANIZATIONIP/Q2/ROM/1
13 January 1999
(99-0093)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English/
French
REVIEW OF LEGISLATION ON TRADEMARKS, GEOGRAPHICAL
INDICATIONS AND INDUSTRIAL DESIGNS
ROMANIA
The present document reproduces the introductory statement made by the delegation of
Romania, the questions put to it and the responses given in the context of the review of legislation at
the Council's meetings of 12 May and 16 July 1998.1
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I. INTRODUCTORY STATEMENT
A. PRESENTATION OF THE LAW ON TRADEMARKS AND GEOGRAPHICAL INDICATIONS2
Romania's first trademark Law was adopted in 1879.  In 1967 it was replaced by Law No. 28.
The legal regime for trademarks is now governed by a new Law, Law No. 84 of
15 April 1998, published in the Official Journal N o. 161 of 23 April 1998, which will enter into force
on 23 July 1998.
Law No. 84/1998 on trademarks and geographical indications takes into account Romania's
obligations under the TRIPS Agreement and other relevant international conventions to which
Romania is party and, consequently, is consistent with their provisions.  The new Law is also
consistent with the provisions of Directive No. 89/104/EEC of 21 December 1988 and Regulation
(EC) No. 40/94 of 20 December 1993.
The Law includes provisions protecting both trademarks and geographical indications.
                                                     
1 The minutes of these meetings can be found in documents IP/C/M/18 and 19.
2 As regards laws and regulations relevant to the areas of trademarks and geographical indications as
notified by Romania under Article 63.2 of the Agreement, reference is made to documents IP/N/1/ROM/1,
IP/N/1/ROM/T/1-3 and IP/N/1/ROM/I/1.IP/Q2/ROM/1
Page 2
Trademarks
As far as the protection of trademarks is concerned, the principal characteristics of the Law
can be summarized as follows:
(a) Protectable subject-matter
Under Article 2(a) of the Law, verbal, figurative, three-dimensional or combined
signs are protectable.  Signs which are not capable of graphical representation are not
registrable.
The Law establishes the legal regime for individual, collective and certification
marks.  As regards the object to which the mark is applied, the Law distinguishes
between both categories being subject to the same legal regime.
(b) Equal treatment
The Law grants, equally and without discrimination, the same treatment to both
Romanian natural and legal persons and foreigners having their domicile or registered
offices outside Romanian territory.
In accordance with the Law and in compliance with the international conventions in
this field to which Romania is a party, nationals of members of the Paris Convention
and the World Trade Organization, as well as nationals of countries which are not
members of the Paris Convention but have their domicile or a real and effectiveindustrial or commercial enterprise in the territory of a country member of the Paris
Convention benefit from the same protection and the same legal remedies as
Romanian natural or legal persons.
(c) System for granting trademark protection
According to Article 4 of the Law, "the right in the trademark is acquired and
protected by registering it with the State Office for Inventions and Trademarks".
To be registrable, a trademark must be distinctive and must not conflict with an
earlier mark or one well-known in Romania at the time of filing of the application for
registration with the State Office for Inventions and Trademarks.
Questions of conflict with earlier marks are examined ex officio  by the State Office
for Inventions and Trademarks and, when an opposition is filed by an interested party
following publication of the mark, the State Office for Inventions and Trademarks
also examines conflicts with other earlier rights:  a right of personal portrayal or to a
name, a protected geographical indication, a protected industrial design, a copyrightor any other protected industrial property right.
(d) Additional protection for well-known marks
The Law grants additional protection to well-known marks.  Thus Article 3(c) states
that "in determining whether a trademark is well-known in Romania, account shall betaken of the knowledge of the mark in the relevant sector of the public for the goods
or services to which the mark in question is applied, without it being necessary for theIP/Q2/ROM/1
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mark to be registered or used in Romania".  (emphasis added by the Romanian
delegation).
As regards the goods or services to which a well-known mark relates, the Law,
identifying such marks as a special category, prohibits the registration of a markwhich would conflict with a mark well-known in Romania for goods or services
different from those to which an application for registration relates if:
- through the unjustified use of the mark to which the application for
registration relates advantage would be taken of the distinctive character or
reputation of the well-known mark;  or
- such use might lead to damages fo r the owner of the well-known mark.
(e) Duration of protection of the mark
According to Article 29 of the Law, "registration of the mark shall take effect from
the date of regular national filing of the mark for a period of ten years".  At the
request of the owner, the registration of the mark may be renewed at the end of each
ten-year period.
(f) Use of the mark
The Law requires use of the registered mark, establishing the penalty of depriving the
owner of his rights, if the mark, without valid reason, has not been effectively used in
the territory of Romania for an uninterrupted period of five years for the goods orservices for which it was registered.
This principle does not apply to well-known marks, as follows from the definition of
that category of marks in Article 3(c).
The Law also establishes another exceptional situation in which the owner, although
the mark has not been used for an uninterrupted period of five years, cannot be
deprived of his rights, namely the situation in which use has been resumed after the
expiration of the five-year period but more than three months before a legal action is
presented requesting that the owner be deprived of his rights.
(g) Transfer of the rights in the mark
In principle, the rights in a mark may be transferred at any time during the period of
protection of the mark.  The transfer may be voluntary (under a contract of
assignment or licence) or compulsory (by levy of execution against the
owner-debtor).
(h) Means of enforcement
The Law provides the owner of a mark w ith a number of administrative, civil and
criminal remedies.
The Law establishes a Re-Examination Board within the State Office for Inventions
and Trademarks before which all decisions taken by the Office concerning theregistration and publication of a mark, the rejection of an application for theIP/Q2/ROM/1
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registration or renewal of a mark, and the recording of an assignment or licence in the
National Register of Marks may be brought for administrative settlement.
On the grounds expressly stipulated by the Law, any interested party may request the
Bucharest Municipal Court to deprive the owner of the rights conferred by the markor, where appropriate, to cancel  the registration.
The owner of a mark may request the competent judicial authority to prohibit third
parties from engaging in any act which, under the Law, constitutes infringement.
Apart from infringement, the Law also consid ers the following to be contraventions:
- the imitation or unlawful use of a mark with a view to misleading the 
public as to the quality of the goods or services to which the mark 
relates;
- the unlawful putting into circulation of a good under a mark identical 
or similar to a registered mark for identical or similar goods, to the 
detriment of the owner of the registered mark.
The person responsible for the injury caused by the above-mentioned contraventions
must pay damages as prescribed by Law.
At the same time, for the enforcement of trademark rights, the Law establishes a
system of remedies which may be orde red by the judicial authority (namely,
confiscation or destruction of the goods to which infringing marks are affixed;
enjoinders to desist from violations of trademark rights by third parties, if suchviolations threaten to cause irreparable damage or there exists a risk of evidence
being destroyed) or by the customs authorities (suspension of import or export
clearance for goods to which infringing marks have been affixed).
Geographical indications
With respect to the protection of geographical indications, Article 3(f) of the Law gives a
definition of such indications in accordance with the TRIPS Agreement.
Under the Law, geographical indications can be protected by registering them with the State
Office for Inventions and Trademarks, in the National Register of Geographical Indications or in
accordance with the terms of the international conventions to which Romania is party.
Geographical indications are protected for an indefinite period and the applicant's right to use
them is granted for a period of ten years with unlimited possibilities of renewal (if the conditions
under which the right was acquired continue to apply).
The Law puts in place, also in the area of geographical indications, a system of legal means
for the enforcement of protected rights, establishing civil and criminal sanctions.
The Law allows an interested party to bring an action to set aside a decision of the State
Office for Inventions and Trademarks concerning the registration of a geographical indication, if the
indication has been registered without comply ing with the conditions laid down by the Law.
In the event of non-compliance with the quality requirements or the characteristics specific to
the products of the region to which the geographical indication relates, the Ministry of AgricultureIP/Q2/ROM/1
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and Food or any other interested party may request the Bucharest Municipal Tribunal to revoke the
rights of the person authorized by the State Office for Inventions and Trademarks to use the registered
geographical indication.
The Law also defines as a contravention certain acts consisting in the circulation of products
under geographical indications when the latter indicate or suggest that the product in question
originates in a geographical area other than the true place of origin in a manner which misleads the
public as to the registered geographical origin.
For the injury done by acts defined above as contraventions, the persons responsible may be
compelled to pay civil damages.
As regards enforcement measures, these relate, in particular, to enjoinders to desist from
violations of rights in a protected geographical indication and preservation of evidence to prove the
origin of the object bearing a protected geographical indication.
In conclusion, we consider that under the new Law, the protection provided for trademarks
and geographical indications in Romania is consistent with the relevant provisions of the TRIPS
Agreement.
B. PRESENTATION OF THE LAW ON THE PROTECTION OF INDUSTRIAL DESIGNS3
Law No. 129 of 29 December 1992 governs the prot ection of industrial designs in Romania
and may be considered to be essentially consistent with the provisions of the TRIPS Agreement.
However, there are still a few amendments which need to be made, especially as regards the means
for the enforcement of the corresponding rights.
With respect to the scope of Law No. 129, it should be noted that it is divided into
six chapters.  Chapter I consists of general provisions; Chapter II sets out the requirements for the
protection of industrial designs; Chapter III concerns the registration and grant of the title of
protection; Chapter IV deals with rights and obligations; Chapter V establishes the responsibilities of
the State Office for Inventions and Trademarks in the field of industrial design protection; and
Chapter VI relates to liabilities and sanctions.
II. REPLIES TO QUESTIONS POSED BY THE EUROPEAN COMMUNITIES AND
THEIR MEMBER STATES
A. TRADEMARKS
1. Article 3(a) of the law on Trademarks and Geographical Indications defines a trademark as
a sign [ … ] serving to distinguish the goods or services of one person [ … ] of other persons.
However, Article 15.1 of the TRIPS Agreement refers to the goods or services of anundertaking.  Please explain this distinction and its consequences.
The definition of a trademark, under Article 3(a) of the Law, utilizes the terms "natural or
legal persons" in a broader sense, which also covers the concept of "undertaking".
The terms "natural or legal persons" are used in Article 3(a) of the Law to ensure complete
concordance with the definition given in the law for the concept of owner.
                                                     
3 As regards laws and regulations relevant to the area of industrial designs as notified by Romania
under Article 63.2 of the Agreement, reference is made to documents IP/N/1/ROM/1 and IP/N/1/ROM/D/1.IP/Q2/ROM/1
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Consequently, in accordance with Article 3(h) of the Law the "owner" is the natural or legal
person in whose name the trademark is registered in the national trademark register.
Taking into account the fact that the TRIPS Agreement does not contain provisions restricting
the concept of owner to "undertaking", the intention behind the Romanian legislation was to definethe concept of trademark as a sign serving to distinguish the goods or services belonging to one owner
("natural person" or "legal person") from those belonging to other owners (respectively, to "other
persons").
The concept of owner in Romanian law retains the meaning given to it in Council Regulation
(EC) No. 40/94 on community trademarks, Commission Regulation (EC) No. 2868/95,  the
Trademark Law Treaty (TLT), the common implementing regulation to the Madrid AgreementConcerning the International Registration of Marks and the Protocol thereto.
Thus, the terms "natural persons" or "legal persons" used in Article 3(a) of the Law have a
broader meaning than the term "undertaking" used in Article 15.1 of the TRIPS Agreement.
2. Articles 2.1 of the TRIPS Agreement and 11 of the Paris Convention provide for
temporary protection of trademarks during offi cial or officially recognized international
exhibitions.  Article 12 of the Law on Copyright and Neighbouring Rights appears to be limited
to settling the issue of priority.  Please clarify this state of affairs.
Under Articles 1 and 2 of the Law, trademark rights are recognized on Romanian territory
under the conditions of the Law and of the relevant international conventions to which Romania is a
party.
Accordingly, the temporary protection provided for under Article 11 of the Paris Convention
is recognized on Romanian territory.  Article 12 of the Law, taking up certain provisions of the
Convention on "right of priority", does not create any limitation or derogation with respect to
Article 11 of the Convention and, respectively, Article 2.1 of the TRIPS Agreement.
B. 
GEOGRAPHICAL INDICATIONS
3. Please explain how, in the event of homonymy, geographical indications of wines are
protected by Romanian legislation (Article 23.3 of the TRIPS Agreement).
Under Article 73 of the Law, registration of a geographical indication in the name of a
producers' association does not prevent registration of the same indication by any other association
engaged in a production activity within the geographical area for the products mentioned in the
application.
This provision, which refers to the obtention of protection by several producers' associations
of the same geographical indication, applies " a fortiori " in the case of protection of homonymous
geographical indications, in accordance with Article 23.3 of the TRIPS Agreement.
For the purposes of implementation of the provisions of Article 73 of the Law, the draft
implementing regulations to the Law (currently under approval) provide that, in the case of
application for protection of certain homonymous geographical indications for wines, the
homonymous geographical indication will be accompanied by an indication of the name of the
association of producers of the wines concerned, as well as by an indication of certification by thecompetent authority of the conformity of the products with the standards laid down by the required
specifications for the homonymous geographical indication.IP/Q2/ROM/1
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C. INDUSTRIAL DESIGNS
4. Article 25 of the TRIPS Agreement provides that WTO Members shall provide for the
protection of independently created industrial designs that are new and original.  Articles 8 and
9 of the Industrial Designs Law do not appear to mention "independently created".  Please
explain how the Romanian legislation implements this TRIPS provision.
The provisions of Articles 8 and 9 of the Law are compatible with the provisions of Article 25
of the TRIPS Agreement.  Nevertheless, with a view to a more specific transposition of the provisions
of Article 25 of the TRIPS Agreement into do mestic law, including the words "independently
created", amendments to the Law are currently being drawn up.
5. Articles 2.1 of the TRIPS Agreement and 11 of the Paris Convention provide for
temporary protection of trademarks during offi cial or officially recognized international
exhibitions.  Article 18 of the Industrial Designs Law seems to be limited to settling the issue of
priority.  Please clarify this state of affairs.
Under Articles 1 and 6 of the Law, rights in industrial designs are recognized and protected
on Romanian territory under the conditions of the law and of the international conventions to whichRomania is a party.
Accordingly, the temporary protection provided for in Article 11 of the Paris Convention is
recognized on Romanian territory.
Article 18 of the Law takes up certain provisions of the Convention on "right of priority" but
does not create any limitation or derogation to Article 11 of the Convention and, respectively,
Article 2.1 of the TRIPS Agreement.
6. Please explain whether and how textiles designs are protected in Romania.
The provisions of the Industrial Designs Law also apply to textile designs.
Consequently, textile designs are protected in Romania in accordance with the conditions and
the procedure laid down for all other types of industrial designs, without any special provision for
textiles.
7. Article 31 of the Industrial Designs Law provides that the duration of protection of a
design shall be five years, which may be renewed for two five-year periods.  Article 26 of the
TRIPS Agreement provides that the duration of protection available shall amount to at least
ten years.  Please explain this state of affairs.
The provisions of Article 31 of the Law are compatible with the provisions of Article 26 of
the TRIPS Agreement.
Article 26 of the TRIPS Agreement does not provide for a minimum ten-year "initial" period
of protection, but that "the duration of protection available shall amount to at least ten years".
With regard to Article 31 of the Law, the duration of the protection available in Romania is
five years with the possibility of renewal for two successive five-year periods.  Consequently, the
maximum period of protection in Romania may reach 15 years, exceeding the term of protection
provided for in Article 26 of the TRIPS Agreement.IP/Q2/ROM/1
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III. REPLY TO QUESTION POSED BY JAPAN
Please explain by referring to specific provi sions in the legislation of your country how
textile designs are protected in conformity wi th Article 25.2 of the TRIPS Agreement.  Moreover,
please explain your system or practice with regard to cost, examination or publication ensuring
that the opportunity to seek and obtain protection for textile designs is not unreasonablyimpaired.
There are no special provisions for textiles, textile designs and models being protected under
Law No. 129/1992 on the Protec tion of Industrial Designs, which lays down the terms of protection.
Moreover, Article 7(g) of the Law on Copyrigh t and Neighbouring Rights of Romania provides
that "... works of art applied to products intende d for practical use" are protected under copyright.
As stipulated in the Berne Convention, no forma lity is required in order to benefit from this
protection.
According to Article 1(2) of the Copyright Law of Romania, the work (including that
mentioned) is protected "... independently of ... disclosure to the public, simply by virtue of ...
creation" even if not finished.  Consequently, there is no question of costs, examination or
publication.  Protection under copyright does not exclude protection under the special Law and
protection under both is possible.
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