Trademarks

1. Advising clients

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

We also advise clients on evidencing of the well-known character of a trademark 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 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’ trademarks;
  • 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 trademarks 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 trademark.
  • 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 trademarks on mugs.

We also counsel clients in out-of and in court transactions. We advise on assignment and licensingof trademark 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 trademarks 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. Trademark filing practice

Our large/strong trademark filings practice includes, but it is not limited to, managing the Romanian trademark portfolio of 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 trademark applications and trademark renewals for well-known foreign companies in different industries, such as news and entertainment, spirits, textile, perfume, car, truck and bus, music, cable television networks, tobacco, pharmaceutical, insurance, technology and event-organizers.

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

We are also filing Community Trademark applications and Community Designs at the Office for Harmonization in the Internal Market (‘OHIM’).

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 trademark rights, we have a wide experience in managing legal actions against infringing signs, as look-alike and counterfeited and with respect to trademark 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 trademarks.

The following recent outstanding cases are to be mentioned:

  • currently advising and representing one of the most known baby food producers in the world in three trademark annulment actions and two trademark rejection to registration cases against a Romanian milk and milk products producer for the registration of similar trademarks. One of the cases has already been won on behalf of our client, this being very important: (A) for the client, as our client invested a lot in its trademark (which is a well-known trademark in Romania) and (B) as a precedent as the Romanian court already confirmed that our client’s trademark has ‘a certain degree of distinctiveness which cannot be contested’;
  • advised, represented and won on behalf of the largest food and beverage company in the world a major case involving rejection of a non-distinctive trademark of a competitor with high importance for the competitor. The case was very important for: (A) both parties as in the situation the competitor would have succeeded in registering the said trademark it would have made all the competitors stop using a similar geometrical figure and (B) as a precedent with respect to the evidence which had to be submitted to prove acquired distinctiveness through use;
  • have been fighting successfully for over 3 years for our client, the leader of the canned meat market in Romania, in a case against a well-known hypermarket chain in an annulment case against one of our client’s trademark. This case was very important: (A) for the client, because of the large sums of money invested in the trademark subject to the annulment court action and (B) as a precedent with respect to the circumstances in which the Romanian courts considers products in class 29 and products in class 30 of Nice Classification as similar/dissimilar;
  • represented a major multinational spirits producer in front of the Supreme Court obtaining a landmark decision in a case related to trademark infringing commercial names;
  • secured another landmark decision ruled by the Supreme Court in a court action for recovery of costs with respect to a trademark 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 trademark.

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. Due-Diligences

  • We are experienced in carrying out and have conducted due-diligences on trademarks 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.

6. Re-branding processes

  • We have assisted the leader of the Romanian canned meat products market in its very complex rebranding project. This was an important project which lasted a year and included special trademark searches and the representation of the client in the procedures of registering the new trademarks nationally and in the European Union as a whole.

7. Conclusion

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

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