E LAW - MURDOCH UNIVERSITY ELECTRONIC JOURNAL OF LAW ISSN 1321-9347 Volume 9 Number 3 (September 2002) Copyright E Law and author File: petroiu93.txt ftp://law.murdoch.edu.au/pub/elaw-issues/v9n3/petroiu93.txt http://www.murdoch.edu.au/elaw/issues/v9n3/petroiu93.html ________________________________________________________________________ Review of the Romanian Intellectual Property Law Regime Marius Petroiu Contents * 1. Introduction to Intellectual Property * 2. Applicable laws - General provisions * 3. Copyright and related rights legal protection * 4. The patents legal regime * 5. The industrial design legal regime * 6. Protection of new varieties of plants * 7. Unfair Competition * 8. Trademarks and geographical indications legal regime o 8.1. International and domestic regulations in force o 8.2. Conditions for a trademark's eligibility and Protection granted o 8.3. Definitions and conditions of eligibility of a geographical indication o 8.4. Advantages of registration of trademarks and geographical indications * 9. Procedural aspects * 10. Conclusion * Notes 1. Introduction to Intellectual Property 1. As the term "intellectual property" is reserved for types of property that result from creations of the human mind, the States that drafted the Convention Establishing the World Intellectual Property Organization (hereinafter "WIPO"),[1] chose to offer an inclusive list of the "intellectual property rights", such as rights related to: copyright and related rights, patents, trademarks, industrial designs and unfair competition. 2. Nowadays, the protection of the intellectual property rights relates also to fields concerning the geographical indications, as a part of the trademarks protection, or to the protection of the new varieties of plants. 3. Thus, it became both just and appropriate that the person contributing the work and effort for an intellectual creation must have some benefit as a result of this endeavor. Moreover, by giving legal protection to such intellectual property rights, many endeavors were encouraged and industries based on such work were determined to grow, as such works brings not only worldwide recognition, but also financial returns. [2] 2. Applicable laws - General provisions 4. Following significant political changes in the late 80's, the Romanian economy faced enormous transformations, based on new principles such as free trade, the insurance of a free market economy or compliance with new requirements imposed by Romanian customers. 5. In this respect, it became obvious that along with the existing international treaties such as the Paris Convention for the Protection of Industrial Property (hereinafter the "Paris Convention"),2 new international regulations providing for the protection of the intellectual property rights were to be enacted. 6. As a first step, pursuant to the Association Treaty signed with the European Communities in 199[3] the Romanian Government agreed to restructure and harmonize national laws with the applicable European Union regulation (the "aquis communautaire").3 7. Moreover, the Romanian Government agreed to comply with certain international treaties, in order to provide a unique level of protection for different fields of intellectual property law. 8. Thus, as part of the Convention for the establishment of the World Trade Organization,[4] Romania agreed to comply with the provisions of Addendum 1C to the Convention, referring to "Trade related aspects of intellectual property rights"(the so-called "TRIPS Agreement").[5] Pursuant to the provisions of Article 11 of the Romanian Constitution, any international treaty ratified by Parliament shall be part of the Romanian legislation. Accordingly, TRIPS provisions are applicable as part of Romanian law since January 1, 2000, after a 5 years transitory period. 9. The present research shall underline certain specific features of the protection of intellectual property rights, as provided by the Romanian laws in force, with a closer in-depth look over the legal framework on trademarks. 3. Copyright and related rights legal protection 10. Along with the provisions of the Berne Convention for the protection of literary and artistic works (hereinafter the "Berne Convention"),[6] the Rome Convention for the protection of performers, producers of phonograms and broadcasting organizations[7] and the Geneva Convention for the protection of producers of phonogram against unauthorized reproduction,[8] The Romanian Parliament approved Law No. 8/1996 on copyright and related rights (hereinafter the "Law No. 8/1996"). 11. Law No. 8/1996 provides for three types of rights that a copyright holder may have: 1. The exclusive right over a literary or artistic work, such as the right of the holder to use the work in any way he wishes and also the right to authorize any third party to use it; 2. The holder's economic rights, such as the right of reproduction of the work, which entitles the author to control the copying of his work, the right of performance of the work, especially referring to the broadcasting and to the communication of the work to the public and the right of authorizing translations and adaptations of the work; and 3. The holder's moral rights, such as the right of authorship, claiming the recognition of the status of author over the work, controlling the ways the work is used in different contexts. 12. Basically, the duration of copyright's protection under Law No. 8/1996 starts upon the creation of the work and lasts for 70 years from the date of the author's death. Such duration is similar to the one provided by the US and European Union regulation. However, Law No. 8/1996 provides also for certain different terms of protection, such as the 50 years protection awarded in case of computer software. 13. With reference to the rights derived from a work protected by copyright ("Related Rights"), the beneficiaries are the performers of the work, the producers of sound recordings (phonograms) and the work's broadcasting companies. The duration of protection of Related Rights under Law No. 8/1996 is of 50 years, starting from the end of the year the performance or the broadcast took place or the recording was made. 4. The patents legal regime 14. As regards the international legal regime of patents, Romania ratified the Patent Cooperation Treaty (hereinafter the "Patent Cooperation Treaty")[9] and also signed a "Memorandum of Understanding" with the European Patents Organization, providing for the principles of further cooperation.[10] Romania has been officially invited by the European Patent Office to adhere to the European Patent Convention, as part of the process of European Union integration.[11] 15. Romanian law of patents relates to the application of Law No. 64/1991 on national patents (hereinafter "Law No. 64")[12] and related implementation Rules No. 152/ 1992, [13] Law No. 93/ 1998 on transitory protection of foreign patents[14] and implementation Rules No. 211/1998.[15] Pursuant to the ratification by Romania of the European Patent Convention, Law No. 203/2002 [16] (to enter into force on August 22, 2002) significantly amended Law No. 64. 16. All patent registration procedures shall be carried out before the State Office for Patents and Trademarks (hereinafter "OSIM"), a national authority, headquartered in Bucharest.[17] 17. The Romanian patent regime supposes the accomplishment of an administrative procedure before the OSIM for the issuance of a patent certificate. The validity of the patent is of 20 years starting with the date the application was officially registered with OSIM. Upon expiration, the technology becomes public property, subject to free use. 18. A patent applicant has provisional rights under the application, once the application has been published in the Official Gazette of Intellectual Property, Patents Section. The definitive protection begins upon the issuance of the patent certificate. 19. Basically, works may become subject of a patent, if such works are new, involve an inventive step and are capable of industrial application. However, certain things may not be patented, such as nature discoveries, machines that defy laws of nature, scientific rules or methods, medical treatments or diagnostics. 20. Law No. 64 entitles the patent's owner to request prohibition of the unauthorized manufacture, trade, offering for sale, use, import or deposit of products made in accordance with the patent, absent an agreement between the parties. Based on such provisions, any patent owner may sue for appropriate compensation. 21. Besides patents, another way to keep a technology secret relates to the "trade secrets agreements". According to Romanian law, individuals as well as corporations are entitled to conclude confidentiality agreements pertaining to the protection of certain information. Such agreements are very suitable in particular for what is referred to as "know-how", namely the technical expertise required to use a given technology. 22. As regards the recognition of Romanian patents worldwide, according to the Patent Cooperation Treaty, the applicant is entitled to file a single international application that becomes a multitude of national applications. However, based on the fact that patent system is a territorial system, the applications shall be examined in each of the designated countries. 5. The industrial design legal regime 23. The protection of industrial design is regulated by the Hague Agreement concerning the international deposit of industrial designs (hereinafter the "Hague Agreement"),[18] the Locarno Agreement on international classification of industrial designs[19] and Law No. 129/1992 on industrial designs (hereinafter the "Law No. 129/1992").[20] 24. An industrial design is the ornamental or aesthetic aspect of an article or of a product, consisting in a two or a three-dimensional feature. 25. Under Law No. 129/1992, in order to be granted industrial protection, an industrial design must be "new" or "original", in terms of aesthetic appearance and attractiveness. Additionally, an industrial design must be "reproducible by industrial means". 26. Provided the above-mentioned terms are met, an industrial design application must be registered with OSIM. Following registration, an examination of the application shall occur. A protection certificate shall be issued for successful applications, valid for a period of 5 years, subject to renewal up to a maximum of 15 years. 27. Pursuant to the issuance of the protection certificate, the owner shall have an exclusive right against any unauthorized copying or imitation made by a third party. 28. As regards the applicable rules for a worldwide protection, industrial design protection is limited to the country where protection is sought and granted, in our case Romania. If protection is desired in other jurisdictions then Romania, a natural or legal entity, national or resident of a State party to the Hague Agreement, shall be facilitated to obtain industrial design protection in a number of countries that are parties to the Hague Agreement. 29. Thus, the entity concerned must file a single international deposit with one Industrial Design Office, in one language and involving a single payment. Such Office could be the International Bureau of WIPO or a national office of the party State to the Hague Agreement. 30. Once such international deposit was created, the applicant enjoys protection in each country listed by the Hague Agreement, as it would have been applied directly with the countries concerned. The exception provided by the Hague Agreement consists in the fact that each national Authority has the right to refuse protection, due to certain specific reasons. 6. Protection of new varieties of plants 31. The new varieties of plants may acquire legal protection under certain international treaties, as the TRIPS Agreement or La Union Internationale pour la protection des obtentions vegetales (hereinafter the "UPOV"), established in 1991 and ratified by Romania under Law No. 186/2000.[21] 32. With reference to the Romanian domestic regulations, several laws were enacted in this respect: Law No. 75/ 1995 regarding the manufacture and registration of seeds and agricultural plants,[22] Law No. 255/ 1998 regarding the protection of new species of plants (hereinafter the "Law No. 255/1998")[23] and the related implementation Rules No. 200/2000 [24] and Law No. 266/2002 on production, manufacture, control and certification of quality, commercialization of seeds and registration of plants.[25] 33. Under Law No. 255/1998, the features of a new plant variety, which may make it eligible for protection, should be: novelty, distinctness, uniformity, stability and a satisfactory denomination, in order to provide its distinctiveness against a generic denomination. 34. Protection is granted by way of a certificate, issued in accordance with a patent mechanism provided by Law No. 255/1998 and carried on before OSIM. The certificates are valid for 30 years for trees and vines and 25 years for other plants, starting with their issuance date. 35. The holder has the right to prevent the acts of production, reproduction, and offering for sale, export, import or deposit for such purposes, absent his approval. 36. As for the international registration of new varieties of plants, the role of UPOV is to simplify the process by way of recognizing the technical testing done in other States, members of UPOV. This system shall determine the diminishing of costs and efforts needed to get national protection in certain UPOV's member countries. All procedures are developed through the UPOV's Office in Geneva. 7. Unfair Competition 37. From the international point of view, TRIPS Agreement and the Paris Convention constitute the legal framework for unfair competition for the protection of industrial property. As regards Romanian relevant regulations, Parliament approved Law No. 11/1991 on combating against unfair competition (hereinafter the "Law No. 11/1991"),[26] as amended by Law No. 298/2001.[27] 38. The main feature of the unfair market behaviour is the attempt by a competitor to succeed in competition without relying on his own achievements in terms of quality, price, quantity and credit or payment modalities of his products or services. Furthermore, such competitor prefers to take advantage of another's competitor work or by influencing consumer demands with false or misleading statements. 39. Under Law No. 11/1991, the main six categories of unfair competition refer to: o Causing Acts of Confusion, such as the acts of a competitor that are aimed to create confusion by any means with the establishment, activities or goods of another competitor. Such unfair competition acts primarily occur in the field of indications of commercial origin and also in the field of appearance of goods. o Misleading acts, which may be defined as a practice creating a false impression on a competitor's own products or services. o Discrediting Competitors is dealing with acts of issuance of certain false allegations concerning a competitor that is likely to harm his commercial goodwill. o Disclosure of Secret Information is represented by the act of revealing certain amount of protected information, which may harm the commercial competitiveness of an enterprise. o Taking Advantage Of Another's Achievements (Free Riding) is a sort of imitation, which relates also with the practices of Causing Confusion and Misleading. Basically, it's the case of a company, which merely copies the product of another company, and promotes such product on the market. o Comparative Advertising is a practice that relates to certain references made to the features of a product, by way of an advertisement announcement. Such comparative advertising may be made as a positive reference, the case when one product is claimed to be as good as the other, or as a negative reference, the case when one product is claimed to be better then the other. 8. Trademarks and geographical indications legal regime 8.1. International and domestic regulations in force 40. From the international point of view, trademarks are regulated mainly through the Madrid Agreement concerning the international registration of trademarks (hereinafter the "Madrid Agreement"),[28] the Protocol concerning the Madrid Agreement,[29] the Nice Agreement on the international classification of products and services[30] and the Vienna Agreement for the international classification of trademarks figurative elements.[31] For international registration purposes, the Trademark Law Treaty[32] was enacted in 1994. 41. The field of geographical indications is mainly regulated by the Paris Convention and also by the TRIPS Agreement. As for Romanian relevant laws, the following were enacted: Law No. 84/1998 on trademarks and geographical indications (hereinafter the "Law No. 84/1998")[33] and the related implementation Rules No. 833/1998 [34] were enacted. Regarding the appellations of origin, as a specific type of geographical indication, the Governmental Decision No. 16/1994 on the ratification of the Agreement between Romania and the European Communities on the mutual protection and control of the wines denomination[35] was enacted. 8.2. Conditions for a trademark's eligibility and Protection granted 42. According to the provisions of Law No. 84/1998, a trademark may be defined as a sign that is aimed at/used to distinguish the goods or services offered by one natural or legal entity from those offered by another competitor. Law No. 84/1998 also provides for certain rights regarding "notorious trademarks", such as the trademark that acquired sufficient distinctiveness and reputation on an international level, without being registered in Romania. 43. Under the provisions of the Law No. 84/1998, for registration purposes, a trademark must be distinctive and not deceptive. 44. In order to be distinctive, a trademark must be able to distinguish the goods and services of its holder from those of another competitor. As a rule, a trademark cannot be distinctive if it describes the identity, substance or nature of the goods or services for which it is used. 45. A deceptive trademark claims different untrue qualities for the goods and services for which it is used. 46. Basically, as regards the process concerning trademarks' protection, the natural or legal entity intending to use it shall file in this respect an application with OSIM. Following the successful examination of the application, a registration certificate shall be issued, entitling the holder to use the trademark as an exclusive owner and to obtain prohibition of others from using it. According to the provisions of Law No. 84/1998, protection for trademarks is granted for a 10 years term, which may be renewed. 47. The Madrid Agreement and the subsequent international treaties allow the applicant to file a single registration for different designated foreign jurisdictions. However, since rights pertaining to trademarks are considered as territorial rights, the worldwide protection over each trademark shall be obtained by way of recourse to each national Trademarks Authority. 8.3. Definitions and conditions of eligibility of a geographical indication 48. A geographical indication is a notice used to show that certain products originate in a certain geographical area. As opposed to a trademark, a geographical indication must be available for use by all the producers in that region. 49. An appellation of origin is a more specific type of geographical indication. The difference consists in the fact that while the geographical indication is a notice stating that a product originates from a specific region, an appellation of origin states that a product has certain qualities mainly due to a certain place of origin. Absent the place of origin, such products would be considered as common products, without any particular features. 50. As a consequence, some products may have certain geographical indications, without presenting a specific appellation of origin. On the other hand, there are other products, which as result of their geographical origin also do present an appellation of origin. 51. Under Law No. 84/1998, geographical indications may be protected by way of registration with the OSIM, following an application filed by the association of producers performing a production activity in the designated geographical area. A certificate issued by the competent Ministry of Agriculture is required, providing for the existence of the intended geographical indication. 52. The protection over a registered geographical indication is granted for a 10 years term. Such term may be renewed. However, geographical indications may also be protected under a bilateral or multilateral context, on a mutual basis. In such case, national registrations are not required. In any case, TRIPS Agreement provides for a higher degree of protection in case of geographical indications for wines and spirits, such to be safeguarded even in the absence of confusion or unfair competition. 8.4. Advantages of registration of trademarks and geographical indications 53. The registration of a trademark or geographical indication is advantageous for the individual or legal entity that initiates it, since trademarks are ensuring a consistent level of quality, helping the consumer to search for good and reliable products. Additionally, consumers are determined to avoid some other products, known as not complying with the legal quality levels. 54. Finally, the most important advantage of a trademark or geographical indication is to create and augment the number of holder's clients. That way, producers are ensured that their investments are covered and a profit has been achieved. 9. Procedural aspects 55. As for the owner's ability of obtaining enforcement of the legal recognition of its intellectual property rights, the above-mentioned laws and the Romanian Civil Procedural Regulation provide for the filing of a legal action for compensation, having as object the total recovery of the existing damages, together with an interim injunction order, to immediately bar all the unauthorized activities infringing the owner's intellectual property rights. 56. The claims shall be stamp taxed and must be filed with the Civil Division of the Court headquartered within the defendant's territorial jurisdiction. 57. Basically, the legal actions for compensation are subject to a three judicial stages circuit: the first instance court, before the Tribunal; the appeal, before the Court of Appeal and the second appeal, before the Supreme Court. In most cases, only a decision issued by the Supreme Court shall be considered as final and irrevocable. The approximate duration of a legal action for compensation could be from 12 to 24 months. 58. However, the claimant may also file for a seizure motion on the accounts or movable and immovable properties of the defendant. The seizure motion shall be stamp taxed and shall be filed with the competent Tribunal dealing with the judgment of the legal action for damages. 59. Both the interim injunction order and the seizure motion shall be judged in an emergency procedure, the court issuing an enforceable sentence, subject only to a second judicial stage (second appeal). The approximate duration of such litigation could be from 3 to 12 months. 60. As a further recognition of the importance of protecting intellectual property rights, in accordance with the provisions of Law No. 202/2000 on certain measures for compliance of customs operations with the recognized intellectual property rights[36] and its implementation Rules No. 301/2001,[37] the claimant may ask the Customs Authorities for the seizure and restriction from trade on Romanian markets of products suspected of infringing an intellectual property right. 10. Conclusion 61. The provisions of the international treaties and the recently enacted Romanian domestic package of intellectual property regulations are to ensure a legal system suitable for the protection of the creations of human mind and for providing financial benefits to such creative endeavors. 62. However, as regards further developments in the implementation of intellectual property regulations, in practice, the reduction of the time between hearings (at present 30 days) and the creation of specialized intellectual property divisions within the Courts involved seems to be a must. 63. Furthermore, the necessity of the increasing role of the Supreme Court, in order to determine the publication of the intellectual property jurisprudence, for a better understanding of the new legal system enforced and for avoiding different case-law should be considered as a priority. Notes [1] The Convention was signed in Stockholm on July 14, 1967 and was ratified by the Romanian Parliament by Decree No. 1175/ 1969, published in the Official Gazette No. 1 of January 6, 1969. [2] Romania agreed to the provisions of the Paris Convention by Decree No. 1177/ 1969, published in the Official Gazette No. 1 of January 6, 1969. [3] The Treaty was signed in Brussels on February 1, 1993 and was ratified by the Romanian Parliament by Law No. 20/ 1993, published in the Official Gazette No. 73 of April 12, 1993. [4] The representatives of 110 states, including Romania, signed the Convention in Marrakech on April 15, 1994. Romania ratified the Convention by Law No. 133/1994, published in the Official Gazette No. 360 of December 27, 1994. [5] TRIPS have been published in the Official Gazette No. 360 bis of December 27, 1994. Pursuant to the provisions of article 11 of the Romanian Constitution, any ratified international treaty shall be part of the Romanian legislation. Accordingly, TRIPS provisions are applicable as part of Romanian law since January 1, 2000, after a 5 year transitory period. [6] The Berne Convention was signed in 1886 and its final version was ratified by Romania by Law No. 77/1998, published in the Official Gazette No. 156 of April 17, 1998. [7] The Rome Convention was signed in 1961 and ratified by the Romanian Government by Law No. 76/1998 published in the Official Gazette No. 148 of April 14, 1998. [8] The Geneva Convention was signed in 1971 and ratified by the Romanian Government by Law No. 78/1998 published in the Official Gazette No. 156 of April 17, 1998. [9] Ratified by Decree No. 81/1979, published in the Official Gazette No. 22 of March 8, 1979. [10] The Memorandum was signed in Bucharest on September 9, 1994 and was ratified by Government Ordinance No. 32/ 1996 approved by the Romanian Parliament by Law No. 32/ 1997, published in the Official Gazette No. 43 of March 14, 1997. [11] The invitation has been released on January 29, 1999 to all East European countries, signatory of Association Treaties with the European Union and provides that the European Patent Convention shall enter into force as of July 1, 2002. [12] Published in the Official Gazette No. 212 of October 21, 1991. [13] Published in the Official Gazette No. 79 of April 30, 1992. [14] Published in the Official Gazette No. 186 of May 20, 1998. As result of the official publication, Law No. 93 entered into force on May 20, 1998. [15] Published in the Official Gazette No. 358 of September 22, 1998. [16] Published in the Official Gazette No. 340 of May 22, 2002. [17] For further details, see Government Decision No. 573/ 1998 on the organization and functioning of the State Office for Patents and Trademarks, published in the Official Gazette No. 345 of September 11, 1998. [18] The Hague Agreement was ratified by Law No. 44/ 1992, published in the Official Gazette No. 95 of May 15, 1992. [19] Law No. 3, published in the Official Gazette No. 10 of January 14, 1998, ratified the Locarno Agreement. [20] Published in the Official Gazette No. 1 of January 8, 1993. [21] Published in the Official Gazette No. 547 of November 6, 2000. [22] Published in the Official Gazette No. 150 of July 14, 1995 and republished pursuant to several amendments, in the Official Gazette No. 362 of December 17, 1997. [23] Published in the Official Gazette No. 525 of December 31, 1998. [24] Published in the Official Gazette No. 134 of March 30, 2000. [25] Published in the Official Gazette No. 343 of May 23, 2002. [26] Published in the Official Gazette No. 24 of January 30, 1991. [27] Published in the Official Gazette No. 313 of June 12, 2001. [28] The Madrid Agreement was ratified by Decree No. 1176, published in the Official Gazette No. 1 of January 6, 1969. [29] Law No. 5, published in the Official Gazette No. 11 of January 15, 1998, ratified the Protocol. [30] Law No. 3, published in the Official Gazette No. 10 of January 14, 1998, ratified the Nice Agreement. [31] Law No. 3, published in the Official Gazette No. 10 of January 14, 1998, ratified the Vienna Agreement. [32] Law No. 4, published in the Official Gazette No. 10 of January 14, 1998, ratified the Vienna Agreement. [33] Published in the Official Gazette No. 161 of April 23, 1998. [34] Published in the Official Gazette No. 455 of November 27, 1998. [35] Published in the Official Gazette No. 23 of January 26, 1994. [36] Published in the Official Gazette No. 588 of November 21, 2000. [37] Published in the Official Gazette No. 142 of March 22, 2001.