ROMANIA LAW AND PRACTICE Contributed by: Raluca Vasilescu, Cabinet M. Oproiu and Ioana Gelepu, The Office Litigation & Enforcement
3. Infringement 3.1 Necessary Parties to an Action for Infringement As a rule, the owner of trade mark or patent rights (ie, the person who owns the industrial property rights) has standing to sue for infringe- ment of those rights. The defendant will be the party accused of infringing the trade mark or patent. However, there are situations in which another person may become a party to such a lawsuit. One example regards licensees (per- sons who have acquired a right to use a trade mark or patent). For example, if a person holds an exclusive licence, that person can seek to defend intellectual property rights in court when the owner does not act to defend those rights within the time limit indicated by the licensee. 3.2 Direct and Indirect Infringement Direct infringement occurs when it can be proved that the defendant(s) directly carried out the fol- lowing infringing acts: producing, sale, offering for sale, or warehousing for the purpose of sale. Indirect infringement occurs when the defendant did not directly carry out the infringing acts but contributed means with which to carry out the infringement while knowing about the infringe- ment; this is why it is called contributory infringe- ment. Typically, this occurs in the case of pat- ents, for example, producing the means that are used for producing the infringing goods (eg, the moulds for the products). The key word for con- tributory infringement is “knowingly”; in other words, the presumable contributory infringer was aware of producing means or facilitating in any other way the infringement. 3.3 Process Patents If the infringement of trade mark/patent rights occurs partially outside the Romanian territory,
has been amended, the administration of new evidence is necessary due to the progress of the proceedings, or the administration of new evi- dence would not result in the postponement of the trial). A statement of claim can be amended (by modifying the subject matter, the cause of action or the parties) without the consent of the defendant until the first hearing. 2.12 Representative or Collective Action The law allows multiple plaintiffs to bring a claim. For example, an infringement action can be brought by both the trade mark owner and the licensee for damages due to counterfeiting acts. Another example is where an invention has been made by more than one person: if a third party engages in acts that allegedly infringe the pat- ent, the two patent owners can both be plaintiffs in an action for damages. Class actions are not common. 2.13 Restrictions on Assertion of an Intellectual Property Right These are some of the main restrictions: • Trade marks: a trade mark owner has the right to prohibit third parties from using its trade mark, but this right may not be misused (for example, to prevent unfair competition). A trade mark loses its protection when not used for a continuous period of five years. • Patents: Patents are protected for a limited period of 20 years from the date of filing the patent application. The law provides for certain exceptions and restrictions relating to inventions that cannot be patented, such as diagnostic, treatment or surgical methods applicable to the human or animal body.
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