Intellectual Property
The business environment in this field is dynamic and increasingly complex as new business models are developed and technological horizons expand. We pride ourselves in offering innovative professional legal advice tailor-made to our clients’ needs.
Our Intellectual Property team has an impressive portfolio of international and domestic clients, on behalf of which it handles a full range of IP matters, advising on internet domain name availability, registration, compliance, protection and enforcement of IP rights and a wide range of agreements relating to creation, use, acquisition, licensing, franchising and exploitation of intellectual property. In the contentious area, we have gathered extensive expertise in handling opposition and appeal proceedings before the Romanian State Office for Patents and Trademarks (OSIM) as well as in representing clients before court in disputes covering all areas of intellectual property, from unfair competition and false advertising to anti counterfeiting and unfair business practices.
Our Intellectual Property team has an impressive portfolio of international and domestic clients, on behalf of which it handles a full range of IP matters, advising on internet domain name availability, registration, compliance, protection and enforcement of IP rights and a wide range of agreements relating to creation, use, acquisition, licensing, franchising and exploitation of intellectual property. In the contentious area, we have gathered extensive expertise in handling opposition and appeal proceedings before the Romanian State Office for Patents and Trademarks (OSIM) as well as in representing clients before court in disputes covering all areas of intellectual property, from unfair competition and false advertising to anti counterfeiting and unfair business practices.
Our most recent instructions include:
- Advising Glaxo SmithKline (GSK), following the acquisition of Europharm (the largest private pharmaceutical group of companies in Romania) in one of the first pharmaceutical patent-related infringement proceedings in Romania. The firm has successfully represented GSK in legal proceedings (both interlocutory injunctions and main case) against another European pharmaceutical company. The firm has also advised on the renewal and protection of various trademarks, including Amoxiclav.
- Retained by Rosia Montana Gold Corporation in connection with the registration proceeding of the “Gabriel Rosia Montana in Partnership” trademark. We are retained by Gabriel Resources, a major Canadian mining group, in relation to the exploration and exploitation of the biggest gold and silver mining site in Europe: Rosia Montana. The development of the Rosia Montana mining project is one of the biggest foreign investments in Romania, the value of the direct investment until exploitation amounting to over USD 750,000,000 while the total investment is expected to amount to over USD 3 billion.
- Advising Dolby Laboratories Inc. with respect to the counterfeit goods of Rosal Import Export SRL featuring, bearing, embodying or incorporating Dolby intellectual property rights.
- Assisting Renault Automobile Dacia S.A., the biggest motor vehicle producer in Romania after its privatization, by representing the client in court proceedings for the cancellation of an industrial product.
- Advising SBS Broadcasting Media SRL in relation to the registration procedures for specific trademarks with OSIM, following the acquisition of the TV Klumea brand from SC Dacia RTV Bucuresti SA.
- Assisting Lotto Sport Italia SpA in connection with representing and protecting the client’s interests in Romania, which involved inter alia conducting court proceedings in relation to imported products counterfeit by affixing the Lotto trademark.
- Advising Reader's Digest Association Inc. in relation to the registration of its trademarks in Romania.
- Assisting Intel Corporation and Intelprof International S.R.L. in relation to proceedings against the infringement of a registered trademark, trade name and domain name in Romania.
- Retained by General Electric Aircraft Engines and Turbomecanica S.A. in relation to the protection of a wide IP portfolio.
- Advising The Body Shop in connection with the infringement of “The Body Shop” trademark in Romania, by SC Grupul Roman de Investitii GRI SA.
- Advising Prima Broadcasting Group SA, a Romanian leading radio broadcasting company, in connection with IP related matters involved in the trademarks registration process in Romania.
- Advising Stelian Tanase, reputed Romanian writer, in connection with copyright protection associated with various TV production agreements.
- Advising Evyap Sabun Yag Gliserin Sanayi ve Ticaret Anonim Sirketi in relation to the registration of its FAX trademark with OSIM and subsequent court proceedings against Henkel’s Fax trademark.
- Advising Duck and Cover in connection with an opposition to an application for the registration of the “Duck & Cover” trademark requested by Yolgoeren Tejstil Insaat Gida Ticaret ve Sanayi Limited.
- Advising “Bucurestiul Cultural” Magazine in connection with the registration proceeding of the “Bucurestiul Cultural” trademark.
- Advising Intersnack Knabber-Gebäck GmbH & Co. KG in relation with its trademark infringement by Croco S.R.L. and the oppositions to OSIM against the latter’s trademark registrations.
- Advising Alka Co in relation to the infringement of the trademark “Nutline” and the industrial design and model related to such trademark.
- Assisting in connection with the review and analysis of the IP portfolio of National Oil Company Petrom S.A., Petromidia S.A., Europharm, BancPost S.A., the Romanian Bank for Development, Banca Agricola S.A., Alro, Alprom and Sidex S.A., during due diligence performed with respect to their acquisition/privatisation.
- Assisting Fun Labs, a well-known Romanian games development company, in relation with registration procedure of certain trademarks.
- Representing Spirits International NV, a Dutch company, in court proceedings involving cancellation of the registration of a trademark confusingly similar to an international trademark owned and traded by it.
- Representing FIFA in court proceedings regarding the immediate ceasing of the broadcasting on Romanian TV channels of certain commercials considered as infringing FIFA’s registered trademarks related to the World Cup Korea-Japan 2002.
- Representing Pfizer Inc. in court proceedings involving cancellation of the registration of a trademark confusingly similar to an International Non-proprietary Name (INN) of a pharmaceutical substance produced and traded by Pfizer Inc., the world’s largest research-based pharmaceutical company.
- Advising Warner Lambert, in relation to parallel imports of counterfeited consumer goods.
- Advising Unilever NV in relation with various court proceedings regarding the infringement of branded consumer goods.
- Assisting Lockheed Martin Corporation, a multinational high technology producer in relation to the registration procedures of several trademarks in Romania.
- Assisting Novartis, a research based life sciences company active on the medical and agricultural-based products markets and a world leader in the research and development of products to protect and improve health and well-being, in claims against OSIM involving a trademark application.
- Advising Oxford University Press, a well-known English university press trust, on the copyright and related rights regulatory framework in Romania for.
- Advising Tofan Group and Michelin in relation to the licence and ownership transfer of several trademarks, as well as assistance on the protection of various trademarks in Romania.
- Representing a top brewery international holding in the proceedings involving infringement of trademarks (both interlocutory injunction and main judgment) as well as proceedings for the cancellation of various industrial designs that were infringing a well known trademark.
- Advising Harlequin Group, a worldwide leading printing house, in connection with copyright infringement proceedings against the illegal publication of trademark and artwork in Romania.
- Advising Instantina Nahrungsmittel Entwicklungs und Produktions GmbH, a well-known German corporation, in relation to the trademark registration procedures in Romania.
- Advising Cadbury Schweppes Plc in relation to the acquisition of Adams Confectionery business trademark portfolio.
- Advising Schlossbrauerei Kaltenberg in relation with the licence of a trademark to the Zimbru S.A. brewery. We drafted and negotiated the trademark licence agreement and advised the client on various legal issues related to trademark licensing and registration.
- Advising Berlin Chemie in connection with its trademark application Benalapril that has been challenged by Merck.
- Advising the National Airline Carrier Tarom, in relation with Internet domain name registration infringing Tarom trademarks.
- Advising Digital in OSIM opposition against a trademark application of Matsushita that was infringing Digital registered rights.
- Assisting Playboy, a worldwide leading adult publication, in relation to the protection and enforcement of copyrights in Romania.
- Assisting Institut National des Appellations d’Origine in an OSIM appeal against several trademark applications.
- Advising Southern Pacific Hotels Corporation Ltd., a well-known hotel chain, in relation to trademark-related court proceedings, involving.
- Assisting Rafo Onesti S.A, one of the largest Romanian oil refineries, in a litigation process involving a patent protecting a method for oil refining.
- Advising Eximbank S.A, one of the biggest banks in Romania, in relation to IP rights on a licensed banking software application.
