TRADE MARKS

1. Advising clients

Our firm has a vast experience in advising multinational companies on trade mark matters from the creation of a trade mark, to its clearance for registration, its registration and the exercise of the rights obtained by registration, to trade mark cancellation actions.

We also advise clients on evidencing of the well-known character of a trade mark and interpretation of the legal provisions with respect to the necessity of use of a well-known trade marks in Romania.

Our firm is experienced in negotiations, many of the cases of infringement being settled between parties on our client’s favour, a few examples of recent such negotiations are provided below:

advised and represented a world-wide leading air freshener producer in negotiation procedures against other company using in the course of trade signs similar with our clients’ trade marks;
advised and represented the leader on the Romanian telecommunications market - a multinational company – and a world-known spirits producer in negotiation procedures against other companies using in the course of trade commercial names similar with our clients’ trade marks;
advised and represented the largest food and beverage company in the world in negotiations with respect to the use by a Romanian company and a Romanian subsidiary of an Italian company of our client’s trade marks on coffee-machines;
advised and represented the largest food and beverage company in the world and the leader on the Romanian telecommunications market - a multinational company – for the negotiations regarding the infringing content of the infringing parties’ websites;
advised and represented the leader on the Romanian telecommunications market - a multinational company – in the negotiation process on a domain infringement of our client’s trade mark.
advised and represented the largest food and beverage company in the world in negotiations with respect to the use by two Romanian companies of our client’s trade marks on mugs.

We also counsel clients in out-of and in court transactions. We advise on assignment and licensing of trade mark rights and drafted a wide range of assigning and licensing documents. When instructed, we also register the drafted assigning and licensing agreements with the Romanian State Office for Patents and Trade Marks ('SOPTM').

In this respect, we mention the following relevant projects:

assisted and represented the largest food and beverage company in the world in registering the assignment of trade marks from ice-cream and pharmaceutical companies in transactions worth 240 million EURO, 2.5 billion EURO and 4 billion EURO;
advised and represented the leader on the Romanian telecommunications market - a multinational company for the assignment of its trademarks. The assignment was further registered with SOPTM;
advised and represented a U.S. pharmaceutical subsidiary of a Tokyo-based research human health care company for the assignment of its trademark in Romania. The assignment was further registered with SOPTM.

2. Trade mark filing practice

Our large/strong trade mark filings practice includes managing the Romanian trademark portfolio of the largest food and beverage company in the world, the number one producer of canned meat on the Romanian market, a well-known baby-food producer, a records company and two of the best-known sports-wear manufacturers in front of SOPTM, as well as before the World Intellectual Property Organization (‘WIPO’).

We also filed and are still taking care of over 500 trade mark applications and trade mark renewals for well-known foreign companies in different industries, such as news and entertainment, spirits, textile, perfume, car, truck and buss, music, cable television networks, tobacco, pharmaceutical, insurance, technology and event-organizers.

Our current clients’ trade marks are at about 3,000 (three thousand) either registered in Romania, having Romania as a designated country or as community trade marks.

3. Prosecution and litigation

We represent clients in front of SOPTM in opposition and appeal procedures and reply to SOPTM's Provisional Refusals with best arguments against prior registered cited marks. In this respect, so far we have dealt with more than 100 replies to Provisional Refusals and over 100 opposition procedures.

With respect to enforcing trade mark rights, we have a wide experience in managing legal actions against infringing signs, as look-alike and counterfeited and with respect to trade mark bad-faith registrations and unfair-competition.

We successful conducted legal actions against infringing signs having as the dominant element either a word or a device.

We also won numerous cancellation for non-use court actions on behalf of our clients.

Permanent and temporary injunctions were victoriously initiated in order to stop the use of the products bearing infringing trade marks.

The following recent outstanding cases are to be mentioned:

represented a major multinational spirits producer in front of the Supreme Court obtaining a landmark decision in a case related to trade mark infringing commercial names;
secured another landmark decision ruled by the Supreme Court in a court action for recovery of costs with respect to a trade mark action;
represented the largest food and beverage company in the world in registration of a tri-dimensional mark with very high commercial value and victoriously the same client in various opposition procedures against infringing trademarks;
represented the number one producer of canned meat on the Romanian market in an annulment court procedures against the owner of supermarket chains;
obtaining a landmark Supreme Court decision for the largest food and beverage company in the world that will clarify legal principles with respect to the powers of attorney;
successfully represented the largest food and beverage company in the world against a Russian company in a trademark procedure against the registration of an infringing trademark similar with our client’s which had as a result taking the product bearing the infringing trademark out of the market;
key Supreme Court victory for the leader on the Romanian market for the telecommunication services – a multinational company - in canceling a trademark which was a barrier to registration of our client’s trade mark.

4. Customs procedures

We effectively filed customs procedures as to stop the infiltration on the Romanian market of the counterfeiting goods and acted as representatives for community customs applications.

5. Other notable actions conducted for the clients

conducted due-diligences on trade marks for multinational companies, including, recently, for one of the best-known baby-food producer in the world with respect to the transaction of selling the baby-food producing company in a 12.3 billion EURO transaction;
advised, assisted and represented the number one canned meat producer on the Romanian market in obtaining a loan agreement of 25.5 million EURO based on a pledge (securities) agreement which was further registered with SOPTM and WIPO;
negotiated, prepared and amended a very important world-wide trade mark co-existence agreement between the number one canned meat producer on the Romanian market and a competitor;
advised within a PHARE Project on “ Upgrading and Harmonization of Intellectual and Industrial Property Rights, and Strengthening of Implementing Authorities in Charge of Intellectual and Industrial Property Protection”;
advised a world-renowned TV programs producing company in a trade mark infringement against a local TV channel;
currently coordinating and monitoring the entire world-wide trade marks registration process for the number one producer of canned meat on the Romanian market.

6. Conclusion

Our firm is conscious of the importance of keeping a trade mark registered and our intention is to make clients feel that their trade marks are protected and to be confident that we guard their portfolio and act immediately when their trade marks are infringed, quickly eliminating any possibility of diminishing the value of their marks.

For the clients for which we handle all their trade mark matters, we undertake a regular review of their portfolio together with conducting of an overview of the Romanian trade mark market and advise on possible conflicts from the third parties' newly registered or not-registered trade marks.