Intellectual Property

As technological horizons expand rapidly and new business models emerge at a fast pace, effective IP portfolio management and comprehensive assessment of IP rights become vital business advantages. In serving our clients’ interests and supporting their commercial success in global markets, our multidisciplinary Intellectual Property team has acquired impressive experience and know-how in a wide array of IP-related matters, covering the acquisition, development, implementation, enforcement, licensing and other exploitation of IP rights, as well as advising on domestic and international patent, trademark and copyright regulatory matters.

Our legal experts have also developed comprehensive knowledge in franchising issues, having advised worldwide famous brands on devising and implementing franchise networks in Romania and neighboring countries, as well as counseled on related agreements and assessed compliance of their respective franchise structure with the Romanian legislation. Having regularly advised high-profile corporations on complex IP issues arisen from a variety of transactional matters, such as M&As, joint ventures, corporate restructurings, divestitures and IPOs, where IP was the key underlying asset, our lawyers and counselors are highly skilled in performing extensive due diligence on IP portfolios, to identify the specific IP assets, determine ownership rights and breadth of IP coverage and evaluate the validity of the IP rights.

Our team’s expertise covers virtually all areas of Intellectual Property Law, touching onto both the intricate aspects of IP non-litigation issues, and on all types of national and international IP litigation issues regarding patent protection, trademark infringement and counterfeiting, copyright, domain name disputes, as well as registered design and the enforcement of other various IP rights against third parties.

 

A selection of our recent instructions in IP area include: 

  • Retained by Novartis Pharma GMBH and Novartis AG, one of the world’s leading innovative medicines producers, with respect to the protection of its patent and trademark rights, including drafting, submitting and representing the client before the Romanian courts in preliminary injunction requests and patent infringement court actions. Our work also involved drafting and filing the intervention application with the relevant authorities, as well as upholding the client’s IP rights before a number of regulatory authorities against several companies.
  • Assisting Abbott Laboratories in respect of the entire array of intellectual property aspects entailed by the internal restructuring process, currently undertaken further to the acquisition of the European-based Solvay Pharmaceuticals.
  • Retained by L’Oreal in connection with a complex litigation concerning trademark infringements by an Israeli cosmetics producer using a trademark identical to the one protected in favor of our Client.
  • Acting on behalf of Institut National de l’Origine et de la Qualité (France), in respect of an opposition procedure against the registration of the Patrimonio indication of origin as a national trademark by one of the leading players on the Romanian wine production market.
  • Advising Monsanto, one of the most important worldwide producers of seeds and other agricultural products, in respect of the IP issues concerning the protection of plant varieties in the context of the internal restructuring of the group.
  • Retained by Hoffmann-LaRoche, one of the top tier producers of originator medicines worldwide, in connection with the protection of several of the group’s trademarks and patents that are also valid in Romania.
  • Assisting H Lundbeck A/S, one of the world’s leading producers of innovative medicines used in the treatment of psychiatric diseases, in respect of the enforcement of its patent rights in Romania. Further representing Lundbeck in both patent annulment cases initiated by generic companies, and in court proceedings referring to Lundbeck’s patent infringement by other companies.
  • Advising Fortis Group in the litigation proceedings against a Romanian-based insurance company, following a material trademark infringement by the latter.
  • Advising Ursus Breweries S.A., the Romanian subsidiary of SABMiller, one of the major worldwide breweries, with respect to various IP rights-related matters following the acquisition of Bere Azuga S.A..
  • Advising Deutsche Telekom, one of the world’s leading telecom providers, in proceedings against the infringement by a Romanian entity of its trademark rights in an on-line reality show and the registration with the Romanian Trademarks Office of a trademark confusingly similar to the one held by our Client.
  • Acting as legal representatives on behalf of the International Olympic Committee and of the Romanian Olympic and Sports Committee in several disputes that concern the infringement by third parties of the IP rights of our Clients over the Olympic Trademarks and Symbols, protected in their favor by the Olympic Charter.
  • Representing Alka Co., a major Romanian FMCG producer, in two disputes regarding the infringement of its trademark “Nutline”, as well as the industrial design and model related to such trademark.
  • Acting as counsel for Google in respect of copyright-related issues concerning the revision of its current labor law framework applied to its employees in Romania. Our work consisted in providing tailored advice in respect of the clauses to be inserted in the labor agreements, so that copyright resulting from the work of the employees be protected in favor of our Clients.
  • Retained by Hitachi Construction Machinery Europe, a leading machinery manufacturer, in respect of trademark infringement proceedings against its former Romanian distributor.
  • Advising Debenhams Plc, Nine West, The Peacock Group, Bo Concept, Ermenegildo Zegna HoldingItalia SpA, IKEA Systems BV, Whirlpool, McDonald's, La Senza International, T2 Tea in connection with the structuring and implementation of a franchise network in Romania and in the neighboring countries.
  • Retained by Mrs. Karen Millen, one of the leading UK designers, in respect of a trademark infringement case initiated against a Romanian company counterfeiting its products and placing such counterfeits on the Romanian market.
  • Advising Mr. Stelian Tănase, one of the most reputed Romanian TV producers and publicists, in connection with the protection of copyrights associated with various TV production agreements and literary works editing agreements with one of the most reputed Romanian publishing houses.  
  • Acting for 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 also successfully represented GSK in legal proceedings (both interlocutory injunctions and main case) for the protection of its Amoxicalv trademark against another European pharmaceutical company, in a case relating to unlawful import in Romania of counterfeit medicines under the Amoxicalv trademark.
  • Representing Pfizer Inc. in court proceedings involving the cancellation of the registration of a trademark confusingly similar to an International Non-proprietary Name (INN) for a pharmaceutical substance produced and traded by Pfizer Inc.
  • Acting for Lotto Sport Italia SpA, Duck & Cover and The Body Shop in relation to administrative and legal proceedings (as well as out-of-court negotiations) for the purpose of removing from the Romanian market counterfeit goods bearing, embodying or incorporating our clients’ trademarks or technologies.
  • Advising Alcatel Lucent SRL in acquiring the rights over inventions created by its employees in Romania.
  • Assisting Palace Resort & Spa, a luxury hotel in Sibiu, with respect to its affiliation to the Hilton international hotel chain via franchise, a complex assignment involving an exhaustive due diligence, drafting comprehensive supporting documentation and negotiating the franchise contract (a novelty for Hilton Hotels in Europe).
  • Retained by Novachrom Industries in relation to the registration of a number of trademarks with OHIM and OSIM and rendering legal representation services and advice in connection with the oppositions raised as a result thereof.
  • Retained by Erudio, a leading Romanian NGO focused on leadership matters, in respect of the protection of its IP rights connected with the materials and presentations prepared by different Romanian and foreign personalities lecturing at such courses and trainings.
  • Representing DJ Magazine Ltd, a leading UK publisher of the largest selling dance music magazine, before the Romanian courts in a trademark annulment case, as well as during the oppositions and appeals lodged before the Romanian Trademarks Office for preventing the registration of confusingly similar trademarks.
  • Advising DTH Television Group S.A. in relation to obtaining copyrights directly from the producers or from the Romanian copyright protection bodies. Furthermore, we assisted the client in respect of the launch and broadcast of various TV advertisements, advising on the enforcement of IP rights in relation thereto, as well as opining on the compatibility of said advertisements with the rules and principles of comparative advertising law and trademark dilution.
  • Retained by Stiftung Amurt Schweiz, member of the Ananda Marga Universal Relief Team, in connection with the protection of its IP rights against the illegal use of trademark and domain name by a Romanian association active in the humanitarian field.
  • Advising Dolby Laboratories Inc. U.S.A. with respect to the counterfeit goods of Rosal Import Export SRL featuring, bearing, embodying or incorporating Dolby intellectual property rights.
  • Advising New Line Cinema U.S.A. in relation to copyright protection over the Romanian translations of the trilogy named The Golden Compass, developed by NLC as theatrical motion pictures.
  • Advising Oxford University Press, a well-known English university press trust, on the copyright and related rights regulatory framework in Romania.
  • Advising Mr. Adrian Sina, one of the most popular Romanian pop artists of the moment, in a complex litigation concerning an infringement of his copyright over a musical piece.