Alin Speriusi-Vlad*

The defense of intellectual property rights is done through special (administrative) action, but also through substantive action on the exploitation and defense of intellectual creations, and until it is settled through interim actions. All decisions issued by OSIM or ISTIS in connection with the granting, refusal or cancellation of the legal protection of industrial creations and distinctive signs, in so far as they are challenged before the court, give rise to a special (administrative) procedures, in which decisions of industrial property protection specialized public authorities are censored on their legality. The writings of the title of legal protection, even if they have a constitutive effect, do not per se ensure the exploitation, the protection of intellectual property rights and even the recognition of intellectual property rights in all cases. The registration of inventions, designs, models, topographies, trademarks, geographical indications, new varieties of plants, utility models at OSIM and ISTIS, the completion of the administrative procedure ending with the issuance of a patent or certificate of registration has the main effect of securing the civil circuit In the field of industrial property. The desirability of such a system of advertising of rights to industrial creations is to know at all times what is protected and what is not protected, what are the latest discoveries of human genius and who is the person who must consent to the use in the civil circuit of these industrial creations, being the owner of the rights granted to it.

Recognition, exploitation and protection of intellectual property rights, including those relating to industrial property, are the sole object of intellectual property substantive actions. In the substantive proceedings, it is essentially examined to what extent the substantive (general and special) conditions for the establishment of a legal protection title in favor of a person are fulfilled or not. Within the special procedures, conflicts of rights are examined as a result of the issue (or refusal) of the writ of the legal protection title. Whenever the special procedure court comes to analyze the substantive conditions of the legal protection title (novelty, industrial applicability, uniformity,  istinctiveness, stability, etc.), it does so either incidentally, analyzing the legality of a document in the administrative procedure (documentation report, admission or position rejection report, etc.) containing information and conclusions about the fulfillment of such a condition, or it does so in the context of a substantive action that is incidental to a special administrative action. As regards the legal nature of the counterfeit action or of any civil action in the matter of intellectual property, it must be determined by the legal nature of the rights recognized in the field of intellectual property. If we accept that these rights are real, the substantive action is also real and has a real character, otherwise it is a personal action or, at least, a sui generis action. Economic rights in the field of intellectual property represent personal rights correlative to a propter rem obligation of the owner of the material (or electronic) support incoporating the intellectual creation consisting in not to reproduce the intellectual creation.

We can speak of a substantive (civil) action specific to the intellectual property field only if it examines the fulfillment of the (general and special) conditions of intellectual  reation protection. The existence and extent of the legal protection of intellectual creation is the object of substantive action specific to intellectual property, and the payment of compensation only exceptionally, where such compensation is the price of the use or exclusive use granted to the rightholder in the case of a compulsory license example.

As long as the object of procedural legal relations forms the intellectual property rights, the existence and scope of the legal protection title in the field of intellectual property can be subject to the court's analysis, through substantive action specific to intellectual property field. In other words, as long as there is a reference to an intellectual property right, at any time it can be argued that that right either does not exist, from a legal point of view, intellectual creation being part of the public domain, or belonging to another subject of law. Such an analysis - of the existence of legal protection - can also be made in the field of industrial property, and the existence, scope and ownership of industrial property rights can be challenged by the request for annulment of the patent or certificate of registration. This request incorporates, in addition to a special administrative action that leads to the dissolution of the patent or registration certificate, a substantive civil action which requires verification of the fulfillment of the conditions for granting legal protection, which is why the request for annulment can be formulated (most times) during the entire validity period of the patent or registration certificate issued by OSIM and ISTIS.

*Lect. univ. dr. la Facultatea de Drept a Universităţii de Vest din Timişoara, E-mail: This email address is being protected from spambots. You need JavaScript enabled to view it. şi managing partner la SVS PARTNERS