ROMANIA LAW AND PRACTICE Contributed by: Raluca Vasilescu, Cabinet M. Oproiu and Ioana Gelepu, The Office Litigation & Enforcement
2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Invalidation of the granted right (patent, utility model, trade mark, design) is the third-party remedy to remove the effects of intellectual property. 2.3 Courts With Jurisdiction Intellectual property dispute resolution is han- dled by two categories of entities: OSIM (eg, opposition to a trade mark registration applica- tion or an application for revocation of a pat- ent) and the courts (these disputes are judged in the first instance by the tribunal, on appeal by the court of appeal and on final appeal by the High Court of Cassation and Justice, the challenge motion being different from case to case). OSIM’s decision will be appealable before the court. If the litigation concerns a European trade mark, the venue is exclusively the Munici- pal Court of Bucharest – Civil Section. 2.4 Specialised Bodies/Organisations for the Resolution of Disputes Apart from those listed in 2.3 Courts With Juris- diction , there are no other specialised bodies or organisations for the resolution of intellectual property disputes. 2.5 Prerequisites to Filing a Lawsuit There are no mandatory pre-trial prerequisites to filing a lawsuit. Usually, warning letters are sent in the case of alleged infringement. Media- tion is not commonly used, although possible. In some specific cases, jurisdictional proceedings before OSIM are mandatory (such as a challenge against an OSIM decision refusing a trade mark registration, which cannot be brought directly before the court).
Trade Marks • Before the court: (i) action for counterfeiting (for when there is a risk of confusion gener- ated by the fact that the public may make a connection between two signs, assuming that both come from the same subject or associ- ated subjects); (ii) action for the annulment of the trade mark registration; and (iii) action for damages. • Before OSIM: (i) opposition to the trade mark registration application; (ii) action for revoca- tion of the trade mark registration; and (iii) application to deprive the owner of the rights arising from the trade mark in strictly pre- scribed cases, such as: (a) lack of genuine use within a period of five years from the date of registration of the trade mark not justified by good reasons; or (b) the trade mark has become the common name in the trade, after registration, for the product or service con- cerned. Patents • Before the court: (i) application for the annul- ment of the patent; and (ii) action for dam- ages. • Before OSIM: request for revocation of the patent. There are also instruments in criminal law for the protection of rights: • regarding trade marks, in the case of the counterfeiting of a trade mark and the putting into circulation of a product bearing a trade mark identical or similar to a trade mark regis- tered for identical or similar products; or • regarding patents, in the case of the infringe- ment of a patent, or the disclosure of data contained in patent applications.
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