Registered Trade Marks: What You Can Protect, the Difference Between National, EU and International Trade Marks, and What to Do When Your Mark Is Infringed

In Romania, the legal regime of trade marks is governed by Law no. 84/1998 on trade marks and geographical indications, republished in 2020. At EU level, the EU trade mark is regulated by Regulation (EU) 2017/1001 on the European Union trade mark, administered by EUIPO (the European Union Intellectual Property Office). For broader protection in multiple countries worldwide there is the Madrid System for the International Registration of Marks, administered by WIPO.

This article is a practical guide, written in accessible language for entrepreneurs and creators: what you can protect as a trade mark, the difference between a national trade mark, an EU trade mark and an international trade mark, and what you can concretely do if someone infringes your mark.

1. What is a trade mark and what can you actually protect?

1.1. The legal definition of a trade mark

Under Law 84/1998, a trade mark is a sign capable of distinguishing the goods or services of one undertaking from those of other undertakings. In the same vein, Regulation (EU) 2017/1001 provides that an EU trade mark may consist of any signs capable of distinguishing the goods or services of one undertaking from those of other undertakings and capable of being represented in the Register in such a way that authorities and the public can determine clearly and precisely the subject matter of the protection.

In practice, for entrepreneurs and creators, the trade mark is the “label” by which customers recognise you: the brand name, logo, slogan, a colour associated with a product, a sound or even a distinctive packaging element.

1.2. What kinds of signs can be trade marks?

National law and EU rules allow a very wide range of signs to be registered, as long as they are distinctive and can be represented in the register. Examples of signs that can be trade marks include:

• word marks: words or combinations of words (brand name, product name, slogans);
• figurative marks: logos, graphic representations, visual elements with or without text;
• combined marks: a combination of verbal and figurative elements (logo plus word element);
• three-dimensional marks: the shape of a product or its packaging, where distinctive (for example, an unusual bottle shape);
• position marks: the specific way in which a sign is placed on a product (for example, a graphic element always applied in the same position on footwear);
• colour marks or combinations of colours, subject to strict representation and distinctiveness requirements;
• sound marks: jingles or short musical sequences identifying the brand;
• motion marks: moving images or animations;
• multimedia marks: combinations of image and sound;
• hologram marks and other non-traditional marks where practice allows.

EUIPO explains these modern types of marks (including sound and multimedia marks) in its user guidance and in the trade mark section, as well as in its Guidelines for Examination.

1.3. Types of marks by function: individual, collective and certification marks

Both national law and the EU Regulation recognise three main categories:

• individual marks: the vast majority of trade marks – owned by a single proprietor (natural or legal person) and distinguishing that proprietor’s goods/services from those of competitors;
• collective marks: protect the signs of an association (for example, an association of producers) and indicate that the goods or services originate from members of that association complying with certain rules of use;
• certification marks: marks which certify a particular quality, origin or characteristic of the goods/services (for example, a mark certifying technical or quality standards), used by third parties complying with regulations of use, and not by the proprietor for its own goods.

For a typical entrepreneur, the most relevant is the individual mark. Collective and certification marks are more common for professional associations, chambers of commerce and quality schemes.

2. What you cannot protect as a trade mark: common grounds for refusal

2.1. Lack of distinctiveness

Law 84/1998 and Regulation (EU) 2017/1001 both lay down absolute grounds for refusal for signs that are not capable of distinguishing the proprietor’s goods or services. A generic or banal sign such as “BREAD” for bakery products or “ONLINE SHOP” for e-commerce services will generally be refused.

In short, you cannot register as a trade mark signs that simply describe the goods or services (the generic name or category) without additional distinctive elements.

2.2. Direct description of goods/services

Excluded from protection are signs consisting exclusively of descriptive indications regarding the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services. For example:

• “CHEAP CAR PARTS” for a car parts store;
• “FAST DELIVERY” for courier services;
• “RED WINE FROM MOLDAVIAN HILLS” as a mark for wines where it directly designates the origin and type of product.

Such phrases may be used for marketing, but cannot be monopolised as trade marks because that would prevent competitors from properly describing their products.

2.3. Generic or customary terms

Signs which have become customary in the current language or in the bona fide and established practices of the trade for those goods/services cannot be registered. Think of standard technical terms, common abbreviations or generic product names.

2.4. Deceptive, unlawful or offensive signs

Signs that may mislead the public as to the nature, quality or geographical origin of the goods/services (for example a mark suggesting the product is “ORGANIC” or “BIO” without meeting legal standards) are excluded, as are signs contrary to public policy or accepted principles of morality (serious insults, incitement to hatred etc.).

2.5. Conflicts with earlier rights

Even if your sign is distinctive, your application may be refused or a third party’s opposition may succeed where identical or similar earlier marks exist for identical or similar goods/services. This is why a pre-filing search is essential, using official databases such as:

• at national level: OSIM resources (the electronic portal OSIM Portal, “Trade marks and geographical indications” section);
• at European and international level: tools such as eSearch plus (EUIPO), TMview and WIPO Global Brand Database.

3. National trade mark, EU trade mark and international trade mark: what to choose and when

3.1. The national trade mark (Romania – OSIM)

A Romanian national trade mark is registered with OSIM – the State Office for Inventions and Trade Marks and governed by Law no. 84/1998.

Key features:

• territory: protection only in Romania;
• authority: OSIM (examination, registration, oppositions, cancellations);
• language: Romanian;
• duration: 10 years from filing, renewable every 10 years;
• costs: generally lower than for an EU trade mark; fees are published by OSIM in its fee table for trade marks and geographical indications.

For a business operating mainly in Romania with no immediate expansion plans in the EU, the national trade mark is usually the first logical step.

3.2. The European Union trade mark (EUTM – EUIPO)

The European Union trade mark (EUTM), governed by Regulation (EU) 2017/1001, is registered with EUIPO and provides unitary protection in all EU Member States.

Key features:

• territory: all current and future EU Member States;
• unitary character: the mark is single and has the same effect throughout the EU – you cannot have it valid in some Member States and invalid in others; invalidity in one state affects the entire EU territory;
• authority: EUIPO (examination, opposition, invalidity, revocation);
• languages: applications are filed in one of the official EU languages and a second language from those of the Office;
• duration: 10 years from filing, renewable every 10 years;
• costs: higher than a single national mark, but cost-effective if you target several EU countries at once; current fee schedules are available on EUIPO’s website.

For entrepreneurs selling online across borders, using international marketplaces or having concrete plans to expand within the EU, the EU trade mark is often a more efficient investment than several separate national registrations.

3.3. The international trade mark (Madrid System – WIPO)

An international trade mark is not a single “global” title, but a system that lets you manage protection in several countries centrally. The Madrid System, administered by WIPO, allows you to file a single international application to designate several countries or regional offices (including EUIPO).

Key features:

• eligibility: you must have a basic mark (application or registration) in a member country of the Madrid System (for example, a national Romanian mark at OSIM or an EU trade mark at EUIPO);
• procedure: you file an international application through the Office of origin (OSIM or EUIPO), indicating the countries or regions where you want protection (the “designated Contracting Parties”);
• central management: changes (change of owner, limitations, renunciations, renewals) are handled through WIPO with effect for all designations;
• duration: 10 years for the international registration, renewable every 10 years;
• coverage: more than 130 countries covered through the 100+ members of the Madrid System.

For brands with concrete plans to expand outside the EU (United States, United Kingdom, Canada, Asia etc.), a mix of national trade mark + EU trade mark + international registration (Madrid System) is often the optimal strategy.

3.4. How to choose between national, EU and international trade marks

The main criterion is where you currently operate or will operate and where there is a real risk of being copied. A pragmatic approach for a Romanian entrepreneur might look like:

• start-up phase, activity mainly in Romania: national mark with OSIM;
• expansion into multiple EU states or consistent online sales across the EU: EU trade mark at EUIPO;
• extra-EU expansion (USA, UK, Canada, Asia etc.): international trade mark via the Madrid System, based on the national or EU trade mark.

It is wise to discuss with a trade mark attorney or IP lawyer to build a portfolio strategy tailored to your business model.

4. The trade mark registration procedure – key steps

4.1. Pre-filing search (availability check)

Before filing an application, you should always check whether identical or similar trade marks already exist for the same goods/services. You can run a preliminary search in:

• the national database (through OSIM’s portal or private search services);
• European and international databases (eSearch plus, TMview, WIPO Global Brand Database);
• search engines, social media and marketplaces to identify unregistered prior use.

For a robust analysis (phonetic, visual and conceptual similarity, likelihood of confusion) it is best to rely on a specialist, not just an informal Google search.

4.2. Defining the list of goods and services (Nice Classification)

A trade mark is not registered “in general”, but for specific classes of goods and services according to the Nice Classification. You must draft a clear list, broad enough to cover your current activity and realistic plans for the next years, but not so broad that you pay unnecessary fees or risk non-use revocation for entire classes.

For EU trade marks and many national offices you can use TMclass, which provides harmonised terms accepted by numerous IP offices.

4.3. Filing the application

The application can be filed:

• on paper (in limited situations) or online with OSIM for a national Romanian trade mark;
• online with EUIPO using the EUTM application forms (Fast Track or advanced form);
• through the Office of origin (OSIM or EUIPO) to WIPO for an international mark, via the eMadrid platform.

In all cases you will indicate the proprietor, representative (where applicable), the sign to be registered (verbal representation, image file, audio file etc.), the list of goods/services, and you must pay the applicable fees.

4.4. Formal and substantive examination

After filing, the Office first checks formal requirements (applicant’s details, representation of the mark, payment of fees), then examines absolute grounds for refusal (distinctiveness, descriptiveness, public policy, deception, etc.).

At EUIPO, this practice is described in detail in the Guidelines for Examination, which are regularly updated and describe how examiners assess each category of absolute grounds.

4.5. Publication and oppositions

If the application passes examination, it is published in the official bulletin (OSIM, EUIPO or WIPO – for international designations). From publication, holders of earlier rights may file oppositions within the applicable deadlines (typically 2–3 months depending on the system).

Opposition is an adversarial procedure in which the owner of an earlier right claims that the new mark is identical or similar to its trade mark, causing likelihood of confusion for identical or similar goods/services, or taking unfair advantage of or being detrimental to the distinctive character or the repute of an earlier mark.

4.6. Registration and duration of protection

If no opposition is filed or if oppositions are rejected, the mark is registered and a registration certificate is issued. Rights generally date back to the filing date (retroactive protection). Protection lasts 10 years and can be renewed indefinitely in ten-year periods by paying the renewal fees.

It is crucial to monitor renewal dates and avoid non-use: after a period (usually 5 years) in which the mark is not put to genuine use for the registered goods/services, it may be vulnerable to revocation actions.

5. What rights does a registered trade mark give you?

5.1. Exclusive right of use

In essence, the registered trade mark gives you the exclusive right to use it for the goods and services for which it is registered. This includes:

• affixing the mark to products or packaging;
• using it in commercial documents and advertising;
• using it on websites, online shops and mobile apps;
• using it on social media, marketplaces, events, fairs and exhibitions.

5.2. Right to prevent unauthorised use by third parties

Law 84/1998 and Regulation (EU) 2017/1001 allow the owner of a trade mark to prevent third parties, without consent, from using in the course of trade:

• an identical sign for identical goods/services;
• an identical or similar sign for identical or similar goods/services where there is a likelihood of confusion, including association;
• an identical or similar sign for dissimilar goods/services where the trade mark has a reputation, and use takes unfair advantage of or is detrimental to its distinctive character or repute.

5.3. Licensing and assignment

You can license your mark (licence agreement) or assign it (assignment agreement). For many entrepreneurs and creators, the mark becomes a commercial asset that can be monetised: franchises, brand licensing, collaborations, co-branding and so on.

6. What to do when your trade mark is infringed

6.1. Identifying infringement

In practice, trade mark infringement can take many forms, such as:

• a competitor uses the same name or a very similar logo for identical or similar goods/services;
• an online shop or social media page presents itself under your brand or one extremely close to it;
• counterfeit products bearing your trade mark are sold on marketplaces;
• another business registers a similar trade mark even though you have prior use.

The first step is to document the situation: screenshots, URLs, purchasing a product to examine packaging, extracts from official databases – any evidence showing use of the sign by the third party.

6.2. Cease & desist letter

Often the first measure is a formal written notice (cease & desist letter) informing the infringer of your registered trade mark and requesting that they cease use, withdraw products, change the name, remove infringing pages or accounts, etc.

Many small traders or good-faith users stop after such a notice, especially if it is properly reasoned and accompanied by registry extracts.

6.3. Procedures before OSIM, EUIPO and WIPO

If the infringement involves the filing or registration of a later trade mark that conflicts with your mark, you can use administrative procedures such as:

• opposition against the later application, within the statutory deadline, at OSIM or EUIPO;
• applications for invalidity or revocation of a registered mark where the legal conditions are met (earlier marks, lack of distinctiveness, non-use, etc.);
• third-party observations (in some systems) on absolute grounds for refusal.

OSIM and EUIPO both have detailed procedures for oppositions and cancellations, laid down in legislation and explained in practice guides and published decisions. EUIPO provides on its website a case-law and decision database accessible via eSearch plus.

6.4. Civil action before the courts

Where the infringement is in actual market use (products, services, online activities), you can bring a trade mark infringement action before the competent courts, seeking for example:

• injunctions to stop use of the sign (including interim measures where conditions are met);
• withdrawal from the market and destruction of counterfeit goods;
• removal of the sign from materials, websites, billboards, social media, etc.;
• damages for material and non-material loss suffered;
• publication of the judgment at the defendant’s expense.

In cross-border disputes (for example, EU trade marks infringed in several states), Regulation (EU) 2017/1001 establishes “EU trade mark courts” which can order measures with effect throughout the EU in certain circumstances.

6.5. Customs and online platform measures

For physical counterfeit products, you can work with customs authorities by filing an application for customs action so that suspicious consignments are intercepted at the border. In the online environment:

• most marketplaces (Amazon, eBay, Etsy, etc.) have “brand protection” programmes and online forms for reporting trade mark infringement;
• social media platforms have mechanisms for reporting accounts or content that misuse trade marks;
• it is useful to enrol your mark in internal brand protection tools of major platforms (e.g. “brand registry” programmes).

7. Strategic tips for entrepreneurs and creators

7.1. Think about your trade mark from the start, not afterwards

One of the costliest mistakes is to build your brand (website, logo, campaigns, packaging, social media pages) without checking trade mark availability and registering first. You may find yourself receiving an opposition or infringement letter from an owner of an earlier mark, forcing you to rebrand mid-flight.

Ideally, your process should look like this:

1. brainstorm brand names and visual identity;
2. perform a quick screening on Google, social media and marketplaces;
3. run clearance searches in official trade mark databases (ideally with a specialist);
4. choose the variant with the lowest legal risk;
5. file the trade mark application;
6. only then invest heavily in branding, website and campaigns.

7.2. At least protect your brand name (word mark)

For many businesses, the most valuable element is the name, not necessarily the logo. It is often advisable to register at least a word mark, in parallel with a figurative mark (logo) where appropriate. Word marks provide broader protection against phonetic or conceptual similarities.

7.3. Align your trade mark with domain names and online presence

When choosing a name, simultaneously check:

• trade mark availability (OSIM, EUIPO, WIPO databases);
• availability of domain names (particularly the main extensions: .ro, .com, .eu, etc.);
• availability of usernames on key social networks.

A strong brand has a consistent identity (or a very close one) across all these spaces.

7.4. Building a long-term trade mark portfolio

As your business grows, it is helpful to plan your trade mark portfolio at several levels:

• main corporate brand (the “umbrella” brand);
• marks for key product or service ranges;
• marks for specific projects, events or premium product lines where it makes sense.

Not every name needs to be registered, but you should have a clear strategy: what must be protected, what you will monitor for the future, and in which territories.

8. FAQ – Frequently Asked Questions on Trade Marks

9. Useful resources

• OSIM – State Office for Inventions and Trade Marks (Romania)
• Law no. 84/1998 on trade marks and geographical indications (OSIM PDF)
• Law no. 84/1998 (Romanian official legislation portal)
• Regulation (EU) 2017/1001 on the European Union trade mark
• EUIPO – About EU trade marks
• EUIPO – eSearch plus (EUTM database)
• TMview – Trade mark search across participating IP offices
• WIPO – Global Brand Database
• WIPO – Madrid System for the International Registration of Marks
• eMadrid – WIPO portal for managing international trade marks
• EUIPO Guidelines for Examination of trade marks