Romania hope to become member of the European Patent Convention in the near future, the effect of the EP being already extended to Romania.

The IP Romanian legislation is harmonize with the European one.

Romania ratified in December 1994 Marrakech Agreement on the constitution of WTO with its special section concerning the intellectual property rights - the Trips Agreement.

Although beneficiary of the flexibility provided in Art.65 of Trips referring to the obligation of its application, Romania adopted till now a complete set of specific regulation for the IPR's protection.

Our answer was drafted taking into account all the above.

1

Is there international exhaustion of (i) patents; (ii) trademarks; and (iii) other industrial property rights? That is, can an industrial property owner use industrial property rights against parallel imports from another country, when the imported products have been put on the market in that country by the industrial property right owner or with his consent?

In accordance with the legal provisions in Romania an industrial property owner can use industrial property rights against parallel imports from another country, when the imported products have been put on the market in that country by the industrial property rights owner or with his consent:

That is valid for all objects of industrial property protected in Romania namely: patents, trademarks, industrial designs, topographies of integrated circuits and new plant varieties.

So, the Patent Law No.64/1991 in Art.34(a) stipulates that: "the patent confers on its owner the right to prohibit third parties from performing the following acts without his consent in relation to products: manufacturing, marketing, offering for sale, using, importing or storing for the purposes of selling, offering for sale or use"

the Trademarks Law No.84/1991 in Art.35(c) stipulates that: " the owner of the trademark may ask to ban the third parties to import or export the products under a sign identical with its trademark or which would produce a risk of confusion in the public perception on products or on packages or which would cause a prejudice to the trademark's owner".

the Design Law No.29/1993 provides in Art.29 that "the Certificate of Registration of the Industrial Design confers on its owner the right to prohibit third parties from performing at least the following acts without his consent; reproducing, manufacturing, marketing or offering from sale, using, importing or storing for this purpose of selling, offering for sale or use of the industrial design of the article in which it is incorporated".

the Topography Law No.16/1995 stipulates that the owner of a registered topography has the right to allow or to interdict other persons to exploit it. The exploitation within the meaning of the present law means:

reproduction, whether by incorporation in an integrated circuit or otherwise of the topography or of a part thereof, except that parts that are not original;

importation, marketing or distribution, in any way, for commercial purposes of the topography or of the integrated circuit incorporating the same

the Law No.255/1998 concerning the new plant varieties contains separate provisions for exhaustion of the holder's right in Art.29, that is:

" the holder's right shall not extend to the acts referring to any propagating or harvested material of the protected variety or of a variety covered by the provisions of Art.27(2) referring to the exclusive right of the plant patent holder and to those referring to parts of the plant of the protected variety or to any material derived from this variety which was sold or marketed by the holder or with his consent, unless such acts involve:

propagation of the protected variety;

exporting the material of the protected variety to a third country which does not protect the varieties of the genera or species to which the new variety belongs except where the exported material is used for food consumption purposes.

2(a)

Can contractual restrictions imposed by an industrial property right owner be used to limit the effect of international exhaustion?

YES, contractual restrictions imposed by an industrial property right owner can be used to limit the effect of international exhaustion. For example, the contract of sale between the owner and the purchaser may provide that the goods are not for re-sale in certain countries outside Romania (country in which they are first sold).

2(b)

What is the effect of breach of contractual restrictions by a purchaser-does exhaustion occur?

The breach of contractual restrictions by a purchaser may make the purchaser liable for damages under civil law but does not determine the occurrence of the exhaustion.

3(a)

If contractual restrictions can be used to limit importation, does it matter whether they are express or implied?

If contractual restrictions can be used to limit importation it is necessary that they to be express.

3(b)

If contractual limitations are express, are there any particular marking requirements?

YES, any particular marking requirements exist if contractual limitations are express

3(c)

If protected products are marked to indicate some marketing restrictions, what are the consequences of removal or loss of any marking?

If protected products are marked to indicate some marketing restrictions, the consequences of removal or loss of any marking depend on the provisions of the contract between the parts.

4

Does international exhaustion of industrial property rights apply where a product has been put on the market under a compulsory licence ( if applicable)?

Where a product has been put on the market under a compulsory licence international exhaustion of industrial property rights does not apply because there are restrictions imposed by the authority which may grant the compulsory licence (Municipal Court of Bucharest) based on the legal provisions. So, in Art.49 of Patent Law No.64/1991 is provided that "the compulsory license shall be non-exclusive and shall be granted on certain conditions regarding duration, royalty amounts and economic rights due to the inventor"

5

Is " consent" which gives rise to exhaustion limited to specific arrangements (for example a relationship with a subsidiary or affiliated company, or an agreement with a licensee) or a question of fact in each case?

NO, a specific arrangement, as for example a relationship with a subsidiary or affiliated company or an agreement with a licensee or any other does not give rise to exhaustion .

6

Can an IPR owner object to parallel importation where (a) goods or (b) their packaging have been modified?

An IPR owner can object to parallel importation where a)goods or b) their packaging have been modified, depending on the respective modification. When the change is very different from the initial model, IPR's objection will not be taken into consideration.

7

As well as stating the laws in their respective countries, the groups are also invited to a) make any proposals for changes and b) offer any observations of interest on the topics raised above.

In our opinion it would be better to diminish the international exhaustion in order to assure a free flow of goods all over the world countries.

Summary

In Romania there are in force the following laws for industrial property objects: patents, trademarks and geographical indications, industrial designs, topographies of the integrated circuits, new plant varieties.

An IPR owner can use his industrial right against parallel imports from another country when the imported products have been put on the market with his consent. He also can limit re-sale of IPR protected products trough contractual obligations imposed on a purchaser.

Résumé

En Roumanie pour les suivants objets de la propriété industrielle sont en vigueur les lois pour : brevets, marques, et indications géographiques, dessins et modeles industriels, topographies de circuits integrés, nouvelles variétés de plante.

Le titulaire d'un droit de propriété industrielle peut utiliser ses droits de propriété industrielle pour s'opposer à l'importation parallele à partir d'un autre pays , lorsque les produits importés ont été mis sur le marché avec son consentement. Le titulaire de DPI peut aussi limiter la revente de produits protégés par des DPI par les obligations contractuelles imposées a un acheteur.