ROMANIA LAW AND PRACTICE Contributed by: Raluca Vasilescu, Cabinet M. Oproiu and Ioana Gelepu, The Office Litigation & Enforcement
certain specific rules become applicable. For example, Romanian courts may have jurisdic- tion in cases where the trade mark infringement had an impact in Romania (eg, where counterfeit goods were sold on the Romanian market). 3.4 Scope of Protection for an Intellectual Property Right The scope of protection of the right used as the basis for an infringement claim is considered according to the respective protection title (pat- ent, trade mark, etc). In case of patent infringement, the court does not carry out an examination of the patent right; it presumes that it is valid. Literal infringement is more frequently encoun- tered than equivalent infringement and less dif- ficult to prove. Equivalent infringement is more difficult to prove. The prosecution history of the patent is taken into consideration only if the defendant – the alleged infringer – files a counterclaim for pat- ent infringement. 3.5 Defences Against Infringement As a rule, the defendant can raise various defences to the plaintiff’s claims. For example, in a trade mark dispute, the party may rely on the lack of similarity of the signs (invoking that there is no risk of confusion between the two). In a patent litigation, the defendant may rely on defences such as: termination of patent protec- tion; lack of equivalence between the patented object and the technical solution used by the defendant. The most frequent defence against infringement is attacking the right (patent or trade mark) on which the infringement is based, usually by lodging a counterclaim or a separate
claim for invalidity. In this case, the infringement claim may be stayed until there is a final decision
in the invalidity claim. 3.6 Role of Experts
An expert’s role is to clarify technicalities of the case. For example, if it is alleged that the defend- ant has infringed the plaintiff’s patent and the former argues that the technical solution used is different from the patented one, the court could appoint an expert to clarify whether or not the theory of equivalents is applicable. The expert is randomly appointed by the court from a list of experts authorised by the Justice Ministry. The parties have the right to designate an advisory expert who will work together with the court- appointed expert. It is important to note that the court is not obliged to take the expert’s opinion into consideration. 3.7 Procedure for Construing the Terms of the Patent’s Claim In a patent invalidity proceeding, the patent own- er can suggest amendments to the claim(s) to the panel of judges which would limit the scope of protection of the patent. If a revocation proceeding takes place at OSIM – see 1.7 Third-Party Rights to Participate in Grant Proceedings – then during the hearing(s) scheduled, the Re-Examination Commission usually makes suggestions of what they think could be acceptable in terms of amended claims, because they are experienced examin- ers familiarised with patent law. Contrastingly, in court proceedings, the judges never suggest what could be acceptable in terms of amended claims.
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