- On 28 June 2018, the Bucharest Tribunal ruled on an application for interlocutory injunction by firstly ruling through Judgment no. 1557/2018 on the standing to bring legal proceedings of an anti-piracy agency mandated by several holders of copyright and neighbouring rights to initiate proceedings in their name and on their behalf.
In the case at hand, the anti-piracy agency, whose business scope was to protect copyright and fight against pirated files sharing, lodged an application in the name and on behalf of the right holders who mandated it to initiate proceedings against an Internet service provider which intermediated a piracy activity.
The Bucharest Tribunal analysed, within the procedural pleas raised by the defendant, whether the agency is the representative of the copyright holders and hasstanding to bring legal proceedings, namely whether it may bring legal proceedings either in its own name, as claimed by the defendant, or in the name of the right holders, according to the statement of claim.
The Tribunal dismissed the plea on the lack of proof of the agency’s standing to initiate proceedings in the name of the righth olders, as well as the plea on the lack of standing to bring legal proceedings by considering the provisions of the relevant law on the recognition of legal standing for entities that collectively represent the interests of multiple right holders.
Thus, the national court considered the provisions of Art. 188 para. (1) and Art. 189 of Law no. 8/1996 on copyright and neighbouring rights, as republished (“Law no. 8/1996”), and concluded that the law allows the agency to act in the name and on behalf of the rightholders to defend their rights against the breaches held based on the express provision stipulating that any claims “may be submitted in the name and for any right holders by the collective rights-management bodies, by the anti-piracy associations or by the persons authorized to use rights protected by this law in accordance with the mandate granted to them in this respect.”
Moreover, the Tribunal also verified the mandates granted by the right holders and noted that they were special mandates, as per Art. 189, being thus sufficient to legitimate the agency to represent the interests of the right holders in civil proceedings and reiterated the possibility provided by the law in favour of the agency to lodge the application in the name and on behalf of the rights holders who mandated it.
In conclusion, the Bucharest Tribunal found that the agency did not lodge the application in its own name but in the name of the right holders and the law recognizes that the entity representing holders of copyright and neighbouring rights with respect to their defence against piracy or any violation have standing to bring legal proceedings for the purpose of fulfilling the mandates received from such right holders.
- On 7 August 2018, the Bucharest Tribunal’s ruling was to be confirmed by a judgment of the Court of Justice of the European Union (“CJEU” or “the Court”), following a request for a preliminary ruling on the interpretation of Art. 4 letter (c) of Directive 2004/48 on the enforcement of intellectual property rights (“Directive 2004/48”) in Case C-521/17.
The Court was called to answer through a preliminary question submitted by the Court of Appeal from Tallinn, Estonia, with respect to the interpretation of the Directive’s provision and whether or not Member States are required to recognize collecting societies as persons with standing to pursue legal remedies in their own name to defend the rights of trade mark proprietors and to bring actions before the courts to enforce the rights of trade mark proprietors, as defendants.
The Court interpreted Art. 4 letter (c) of Directive 2004/48 to the effect that Member States are required to recognize a collective representation body “as having standing to seek, in its own name, the application of the remedies laid down in that directive, for the purpose of defending the rights of those trade mark owners, and to bring legal proceedings, in its own name, for the purpose of enforcing those rights”, subject to the following conditions:
- the body “is regarded by national law as having a direct interest in the defence of those rights”
- that law allows that body to bring legal proceedings, a matter for the referring court to verify”.
- The Tribunal anticipated CJEU’s judgment that it is necessary to verify the two cumulative conditions in order to establish the existence of the standing to bring legal proceedings.
By establishing that the anti-piracy agency lodged a statement of claim in the name of the right holders, the Tribunal verified only whether the condition that the recognition of the legal standing was provided by law, as long as the agency represented the interests of the right holders and not its own interest. The situation of the anti-piracy agency falls precisely under the legal hypothesis provided by the provisions of Art. 188 para. (1), second thesis, of Law no. 8/1996, therefore according to Romanian law, it can have a standing to bring legal proceedings in the name and on behalf of the right holders it represents, within the limits of the mandates granted and of its scope of business.
If in Case C-521/17 the request was submitted by the representation body in its own name, before Bucharest Tribunal the request was submitted in the name and on behalf of the right holders. However, Article 4 of Directive 2004/48 neither makes such distinction nor regards trademarks only, so that the Court’s interpretation of the recognition by the Member States of the standing to bring legal proceedings of bodies which defend the intellectual property rights of certain right holders whose interests they represent becomes even more evident in the case settled by Tribunal.
Beyond the importance of the judgments ruled as regards the extension of IP rights holders’ possibility to protect themselves against infringements committed on the territory of the European Union, it is worth mentioning that the Romanian courts confirm that Romania has become a jurisdictional forum which is more predictable and aligned to the European case law on the protection of intellectual property rights.
“I am glad that the law firm MUȘAT & ASOCIAȚII was involved in this project as well which, in the tradition of the department, materialised in an important decision in the field of intellectual property law in Romania. I believe that the judgment ruled by the Bucharest Tribunal, which, by interpreting the applicable domestic and EU law, has anticipated the judgment delivered by the Court of Justice of the European Union, is beneficial for the intellectual property rights holders, but also an opportunity for associative bodies, whether incumbent or future, to contribute more actively to protecting the rights of their members in the increasingly complex and difficult fight against online and offline counterfeiting.”– Paul Buta, Partner at MUȘAT & ASOCIAȚII, Head of Competition, IP and Life Sciences Department.
Recognized in the market as an innovative department focused on solving the most complex issues in the field, the Competition, IP and Life Sciences department has been involved during the firm’s history of over 28 years on the Romanian market in multiple projects that have enriched the relevant areas of practice, be it competition law, intellectual property law or health care-related legal aspects.
Given the increase in the workload and in the complexity of projects involving the lawyers in our department, the team is continuously growing by recently welcoming two new lawyers with a long and vast experience in the field of intellectual property.
Julieta Sfeclă, (Managing Associate) is joining the IP and Litigation & Arbitration teams after having worked in law firms specializing in intellectual property. Julieta has a complex experience in legal representation and consultancy, especially in trademark protection – anti-counterfeiting and parallel imports, being also involved in major projects on patent rights granted in Pharma industry. Throughout her career, she has provided legal assistance and representation to well-known international companies in connection with various aspects in the field of intellectual property rights, consumer law and advertising law in various sectors such as pharmaceuticals, cars, telecommunications, FMCG, cosmetics, etc.
In the field of data protection and personal rights, Julieta Sfeclă has rendered legal assistance to a large number of clients from different industries in local and international projects.
Adrian Căvescu, (Managing Associate) brings a vast professional experience of 19 years, during which he held various legal positions within the Economic Police (related to the field of intellectual property rights protection) and within the Legal Department of the Capital City Police. Since 2007, for 11 years coordinated the legal department of the Industrial Property Agency Rominvent. In this capacity, he coordinated major projects in the field of intellectual property, advising clients like McDonald’s, KFC, Dominos, H&M, Samsung, Hyundai, Jack Daniel’s, Red Bull, Dacia Renault, Daimler Benz, Husqvarna, Lego, Merk, Bayer, FCSB S.A., John Deere, Autobild, Rewe Romania, etc.
As an European advisor (EUIPO) and Romanian advisor (OSIM) for trademarks and designs, member of the National Chamber of Industrial Property Attorneys of Romania since 2008, Adrian coordinated complex industrial property cases together with the most prestigious international law firms and industrial property agencies, both with respect to the registration of rights and to the protection of such rights. He specializes in Internet-related disputes brought before the Arbitration Court attached to WIPO and before the Romanian courts.
MUȘAT & ASOCIAȚII has managed to stand out this year due to its sustained development in most areas of practice, thus continuing to remain the first choice for many foreign companies operating or opening operations in Romania, but also for the big local business players.
About MUŞAT & ASOCIAŢII
MUŞAT & ASOCIAŢII is one of the first law firms established in Romania after 1 January 1990. With 16 partners and over 100 attorneys and advisors, MUŞAT & ASOCIAŢII provides consulting services in all business law areas, including Mergers & Acquisitions, Privatization, Banking, Energy & Natural Resources, Competition, Corporate, Telecommunications & IT, Labor, Tax, Capital Markets, Real Estate, Environmental Law, Litigation & Commercial Arbitration.
Renowned as one of the pillars of Romania’s business law practice, MUŞAT & ASOCIAŢII is constantly recommended by international specialized publications (Chambers & Partners, International Financial Law Review, Legal 500 etc.) as a leading law firm in Romania. Besides, many of its attorneys have been nominated by such publications among the elite of business law in Romania.
In 2016, MUŞAT & Asociaţii won the trophy for the biggest transaction in energy for counseling Sterling Resources in the selling process of its business in Romania to Carlyle International Energy Partners and also the award for the largest transaction in HORECA for assisting Premier Capital in acquiring Mc Donald’s Romania.
The trophies were handed out by Ziarul Financiar, the most well-known business newspaper in Romania, at the Lawyers Gala 2016, which awarded the law firms that concluded most transactions in 2015 and first part of 2016.
In 2015, MUŞAT & ASOCIAŢII won the “Law Firm of the Year in Romania” award, a distinction handed out annually by the reputed British publisher “The Lawyer” to European law firms with outstanding achievements in the reference year.
In 2013, MUŞAT & ASOCIAŢII won the “The Law Firm of the Year in Romania” award granted by the International Financial Law Review. That was the second time that Muşat & Asociaţii was granted this prestigious award, after the distinction received in 2011, when Romania was included for the first time on the list of countries nominated for the International Financial Law Review (IFLR) awards.
Moreover, in 2012 MUŞAT & ASOCIAŢII won the Gold Award for the “Best Law Firm in Central and Eastern Europe”, an accolade awarded by the 2012 International Legal Alliance Summit & Awards, for excellent results obtained on the Romanian market by the MUŞAT & ASOCIAŢII team, both with regard to the mandates portfolio in the Mergers & Acquisitions area of practice, and to the management strategy adopted.
Furthermore, the renowned publication Chambers Europe awarded the “Romanian Law Firm of the Year” trophy to MUŞAT & ASOCIAŢII, the law firm with the best performance in Romania, during the “Chambers Europe Awards for Excellence 2011” gala.
On a regular basis, MUŞAT & ASOCIAŢII provides the most renowned and valued corporations in Romania – including a third of the Top 100 and a half of the Top 500 largest companies – as well as local public and financial institutions with legal advice on intricate corporate and financial transactions and complex dispute resolution procedures. The Law Firm’s portfolio includes over 2,500 clients, most of which are foreign investors.