Lexters

Trademark

  • What is a trademark?

A trademark is a distinctive sign, symbol, word, phrase, design, or combination thereof used to identify and distinguish goods or services from those of competitors. It serves as a unique identifier of the source and quality of the products or services.

  • Why Register a Trademark?

Registering a trademark provides legal protection and exclusive rights to use the mark in connection with specific goods or services. It helps prevent others from using a similar mark that might cause confusion among consumers and establishes your brand’s identity.

  • What Can Be Trademarked?

Trademarks can include words, logos, slogans, sounds, colors, shapes, and even scents, as long as they are distinctive and capable of distinguishing your goods or services from others.

  • How Long Does Trademark Registration Take?

The time for trademark registration varies by jurisdiction and complexity. On average, the process can take several months to over a year, accounting for application review, potential objections, and any necessary follow-up.

  • How Much Does Trademark Registration Cost?

The cost of trademark registration depends on factors such as the jurisdiction, the number of classes of goods/services.

  • Where Should I Register My Trademark?

You can register your trademark at the national level, european level or opt for international registration through treaties like the Madrid Protocol for broader protection across multiple countries.

  • Can I Trademark a Common Word?

Yes, you can trademark a common word if you can demonstrate that it has acquired distinctiveness in association with your goods or services. This might require evidence of substantial use and consumer recognition.

  • What is the Madrid Protocol?

The Madrid Protocol is an international treaty that facilitates the filing and management of trademark applications across multiple countries using a single application. It simplifies the process of seeking trademark protection in multiple jurisdictions.

  • Can I Trademark My Personal Name?

You can trademark your personal name if it is used as a distinctive identifier for goods or services. However, personal names that are common or widely known might be more challenging to trademark.

  • What is the Likelihood of Confusion?

The likelihood of confusion refers to the possibility that consumers might be confused between two trademarks due to their similarity and the relatedness of the goods or services they represent. This is a key factor in trademark application review.

  • Can I trademark a domain name?

Trademark protection extends to domain names if they are used in connection with specific goods or services and if they meet other trademark registration requirements. However, mere registration of a domain name might not grant trademark rights.

  • What happens after trademark registration?

After registration, you gain exclusive rights to use the trademark for the listed goods/services. You’re responsible for maintaining and protecting the mark, which involves regular renewals and taking action against infringement.

  • Can trademarks expire?

Yes, trademarks require periodic renewal to maintain their validity. Renewal intervals vary by jurisdiction but are usually required every few years. Failing to renew could lead to the trademark’s expiration.

  • What is trademark infringement?

Trademark infringement occurs when someone uses a mark that is confusingly similar to a registered mark on similar or related goods or services. It can lead to legal action by the trademark owner to protect their rights.

  • Can I change My Trademark After Registration?

Making significant changes to a registered trademark after registration can be complex. Minor changes might be possible, but substantial changes could require filing a new application.

  • What if My Trademark Application is Denied?

If your application is denied, you can review the reasons provided by the trademark office and consider amending the application or providing additional evidence. You also have the option to appeal the decision.

  • Do Trademarks Cover International Protection?

Trademarks are primarily territorial, but international protection can be achieved through mechanisms like the Madrid Protocol, which allows you to seek trademark registration in multiple countries through a single application.

  • What is the List of Goods and Services?

The list of goods and services is a crucial part of a trademark application that outlines the specific products or services associated with your trademark. This list helps define the scope of protection for your mark.

  • How Do I Choose the Right Goods and Services?

To select the appropriate categories, consult the official classification system known as the Nice Classification. This system categorizes goods and services into various classes. Carefully consider the nature of your business and the actual products or services you offer.

  • Can I Add or Modify Goods and Services After Filing?

Generally, changes to the list of goods and services are limited once an application is filed. It’s best to be thorough initially, but some jurisdictions allow minor amendments. Major changes could require filing a new application.

  • Can I Expand My Trademark to Cover New Goods or Services?

Yes, you can file additional applications to cover new goods or services. Each application will be examined independently, and the existing trademark protection won’t automatically extend to the new categories.

  • Is My Trademark Limited to the Listed Goods and Services?

Yes, your trademark’s protection is tied to the goods and services you’ve listed. It’s important to use your mark in connection with the listed items to maintain its validity.

  • Can I Register a Trademark for Multiple Categories?

Yes, you can register a trademark for multiple goods or services categories. This is particularly useful if your mark is used across various business areas.

  • What if My Goods and Services Change Over Time?

If your goods or services change substantially, it’s advisable to update your trademark registration to accurately reflect the current usage. This can involve filing an amendment or a new application.

  • Can I Remove Goods and Services from My Registration?

In some cases, you can voluntarily narrow the scope of protection by removing certain goods or services. This can be done through amendments or by not renewing protection for those items.

  • What if My Trademark is Similar to Others in Different Categories?

The likelihood of confusion depends on both the similarity of trademarks and the relatedness of goods or services. If two marks are similar but used for unrelated goods or services, it might be possible for both to coexist.

  • How Do I Avoid Descriptive Language in My Goods and Services?

Descriptive language can weaken your trademark’s distinctiveness. Instead, aim for specific and unique terms that clearly define your goods or services without simply describing them.

  • What Happens if My Goods and Services Are Too Broad?

An overly broad description might lead to rejection or the requirement to narrow down the list. It’s important to strike a balance between providing comprehensive coverage and avoiding overly generic terms.

  • Can I Transfer My Trademark to Cover a Different Owner’s Goods and Services?

Transferring a trademark to a different owner generally maintains protection for the same goods and services. However, using the mark for new goods or services might require a separate application by the new owner.

  • Can I Amend the Goods and Services After a Trademark is Registered?

Most jurisdictions allow limited post-registration amendments, but major changes might require reapplication. It’s important to consult with a trademark attorney to understand the rules in your jurisdiction.

  • Do my goods and services affect international Trademark Registration?

Yes, the list of goods and services is crucial for international registration under the Madrid Protocol. Make sure the goods and services are accurately described to ensure effective protection across multiple countries.

  • What is a Trademark Opposition?

A trademark opposition is a formal legal proceeding that allows parties to challenge the registration of a trademark application. It occurs after a trademark application has been published for opposition. The goal is to prevent the registration of a mark that is believed to conflict with existing rights or violates other grounds for opposition.

  • Who Can File an Opposition?

Trademark owners, as well as interested parties who believe their rights would be affected by the registration of the applied-for trademark, can file an opposition. Interested parties could include competitors, existing trademark owners, or consumer protection organizations.

  • When Can I File an Opposition?

Typically, an opposition must be filed within a specified period after the publication of the trademark application. This period varies by jurisdiction and is usually around 30 to 60 days.

  • Is negotiation possible during a trademark opposition?

Yes, parties involved in an opposition can engage in settlement negotiations to resolve the dispute outside of the formal opposition process.

  • What are the potential costs and risks of trademark opposition proceedings?

Opposition proceedings can be costly and time-consuming, with uncertain outcomes. Both parties should weigh the potential benefits against the risks.

  • What happens if a trademark opposition is successful?

A successful opposition can lead to the refusal of the trademark application’s registration. The applicant might modify the mark or abandon the application.

  • Can decisions made during opposition proceedings be appealed?

Yes, decisions made during opposition proceedings can often be appealed, allowing either party to challenge the outcome.

  • Can well-known trademarks oppose unrelated marks?

Yes, well-known trademarks can oppose similar marks even if the goods or services are not directly related, based on the risk of dilution or tarnishment.

  • What is trademark monitoring?

Trademark monitoring is the ongoing process of tracking and reviewing new trademark applications, registrations, and other potential uses of marks that are similar to your own. It helps you identify and address potential conflicts or infringements.

  • Why is trademark monitoring important?

Trademark monitoring is crucial for protecting your brand and trademark rights. It allows you to detect potential conflicts early, take timely action against infringing marks, and maintain the distinctiveness and value of your brand.

  • What risks can arise without proper trademark monitoring?

Without monitoring, you might not be aware of new trademarks that could be confusingly similar to yours. This could lead to consumer confusion, dilution of your brand, or even legal disputes that might have been preventable with early intervention.

  • How does trademark monitoring help in maintaining my brand’s identity?

Monitoring helps you ensure that your brand’s identity remains distinct and unique. By identifying similar marks, you can take steps to protect your brand’s integrity and avoid the risk of consumer confusion.

  • How can trademark monitoring prevent infringement?

By monitoring new trademark applications and registrations, you can identify potential instances of trademark infringement and take prompt legal action to protect your rights before the infringing mark becomes established.

  • Does trademark monitoring help with enforcing my trademark rights?

Yes, trademark monitoring gives you the opportunity to take proactive steps to enforce your trademark rights against potential infringers. This might involve sending cease-and-desist letters, initiating opposition proceedings, or taking legal action if necessary.

  • How often should I conduct trademark monitoring?

Regular trademark monitoring is recommended, ideally on an ongoing basis. This could involve periodic checks, especially around the time when new trademarks are published for opposition.

  • What action should I take if I find a potentially conflicting trademark?

If you identify a potentially conflicting trademark, consult with a trademark attorney to assess the situation and determine the best course of action. This might involve sending a cease-and-desist letter, negotiating a settlement, or initiating opposition proceedings.

Franchise

  • What is a franchise?

The applicable Romanian laws define franchise as follows: “Franchise represents a system of marketing products and/or services and/or technologies based on continuous collaboration between legally and financially independent individuals or entities. In this arrangement, one person, known as the franchisor, grants another person, known as the franchisee, the right and imposes the obligation to operate a business in accordance with the franchisor’s concept. This right authorizes and obliges the franchisee, in exchange for a direct or indirect financial contribution, to use product and/or service trademarks, other protected intellectual or industrial property rights, know-how, copyrights, as well as trademarks, benefiting from ongoing commercial and/or technical assistance from the franchisor, within the framework and for the duration of the franchise agreement concluded between the parties for this purpose”.

  • How can my business become a franchise?

Before expanding through franchise, the franchisor must have (i) proven the business concept by successfully operating it for at least one year, as well as (ii) registered its intellectual property rights. Also, before selling the franchise, the franchisor is obliged to meet the pre-contractual disclosure requirement. In case failing to comply with these obligations, the franchisee may request the courts to ascertain that the contract is null and void and it may be entitled to claim the related damages.

  • Which are the most prosperous sectors for franchising? 

Nearly any prosperous business has the potential to evolve into a franchise model, although the food & beverage sector is notably one of the most prolific in Romania. More recently, it has also gained traction in the education and healthcare sectors.

  • Are there any registration requirements for franchisors and/or franchisees?

Registration of franchisors and/or franchisees is possible, but not mandatory under Romanian law.

  1. What must i know before becoming a franchisee?

The pre-contractual information disclosure is a legal obligation of the franchisor. Before executing the franchise agreement, the franchisor must inform the franchisee on the following:

1) the history and experience of the franchisor;

2) details regarding the management’s identity; 

3) the franchisor’s and its management’s litigation history; 

4) the initial investment required to operate the franchise; 

5) the mutual obligations of the parties; 

6) the franchisor’s financial results from the previous year; 

7) information regarding the pilot unit.

The information must be disclosed to the franchisee in the form of a disclosure letter, drafted in the language of the franchise agreement. 

If the franchisor fails to comply, the franchisee may file a lawsuit seeking damages. Additionally, conditioned by proving its consent had been vitiated, the franchisee may initiate legal proceedings to request the invalidation / annulment of the franchise agreement. If the agreement is invalidated, the franchisee may seek, among others, the reimbursement of the entry fee and the royalties paid.

  • Are there any franchise specific laws governing the ongoing relationship between franchisor and franchisee?

The ongoing relationship between franchisor and franchisee is governed by Law no. 179/2019, the Government Ordinance no. 52/1997 and supplemented with the Romanian Civil Code and related legislation. 

The franchise agreement must: 

1) clearly define the obligations and responsibilities of each party, as well as any other collaboration clauses;

2) include the subject of the agreement / the rights and obligations of the parties / financial conditions / agreement duration / conditions for amendment, extension and termination.

3) a non-compete obligation.

  • Is there an obligation (express or implied) to deal in good faith in franchise relationships?

The Romanian franchise legislation and the Romanian Civil Code provide the obligation of dealing in good faith in business relations in general, as well as in a franchise relationship in particular. 

If the party that deals in good faith suffers damages resulted by the bad faith of the other party, the first party can seek damages.

  • Is it possible to impose contractual penalties on franchisees for breaches of restrictive covenants etc.?

Yes, penalties for breaches of the restrictive covenants are standard in franchise agreements. Such aim at simplifying the damages calculation in court. For the penalties to be enforceable, the respective breach must be reported in writing.

  • What are the applicable data protection laws and do they have any specific implications for the franchisor/franchisee relationship?

In Romania, the applicable data protection law is EU Regulation 2016/679. The national laws do not provide for significant deviations from the above-mentioned regulation. 

The data protection implication for the franchisor/ franchisee relationship must be established through a data processing agreement in which the parties will have the roles of controller/ processor or joint controllers.

  • Are there any mandatory termination rights which may override any contractual termination rights? Is there a minimum notice period that the parties must adhere to?

The Romanian laws do not contain provisions regulating the termination of franchise agreements; instead, they regulate that termination grounds must be explicitly stated within the agreement. Therefore, the provisions of the Civil Code and the contractual terms are generally applicable. 

  • What due diligence should both the franchisor and the franchisee undertake before entering into a franchise relationship?

From the franchisee perspective, the most important aspect is verifying the information disclosed by the franchisor especially on the trademark, the financial results and the litigation history (all these could be validated from public sources). 

On the other hand, the franchisor should check whether the franchisee is a good fit for the business and if it has the financial / personal capabilities and means to open and operate the business.

  • What dispute resolution procedures are available to franchisors and franchisees?  

Franchisors and franchisees might seek amicable settlement and mediation before submitting their case to the courts. However, this preliminary step is not mandatory.

If an amicable resolution cannot be reached, there are two dispute resolution options: the state courts and arbitration courts. 

The arbitration procedure is quicker than the state court procedure, but more expensive than the latter. Another advantage of arbitration is, in some cases, the confidentiality of the arbitration file.

In urgent matters (e.g. intellectual property / non-compete infringements), interim injunctions could be sought under state court procedures to temporarily block use. This type of injunction is not possible in arbitration procedures.

  • Is it possible to sign the franchise agreement using an electronic signature (rather than a wet ink signature)?

Yes, the Romanian law recognises several types of qualified electronic signatures that ensure the identity of the person signing the person executing the agreement. For signing the franchise agreement electronically, both parties must have a qualified electronic signature.  

  • Are there any intangible assets in the franchisee’s business which the franchisee can claim ownership of on expiry or termination, e.g. customer data, local goodwill ?

Keeping in mind that the local goodwill and the customer data were built under the franchise network and the franchisor’s trademark, the franchisee can’t claim ownership. 

One circumstance where the franchisee could be entitled to claim ownership of the goodwill is in case of franchise agreement annulment caused by the breach of legal obligations by the franchisor.

  • What tax considerations are relevant to franchisors and franchisees? Are franchise royalties subject to withholding tax?  

There is no specific tax regime for franchising, such depends on the legal form used to set up the business.