Intellectual Property

Practice Highlights. A selection of our deal highlights includes advising:

• Deutsche Telekom A.G., a leading German telecommunications company, in connection with the protection of its trademark portfolio in Romania against third party infringements of its reputed trademarks in Romania, including the Magenta colour trademark owned by the Client.
• ZTE Corporation, a Chinese multinational telecommunications equipment and systems company (and its Romanian subsidiary), in connection with a patent infringement case brought in several jurisdictions across the world by Vringo Infrastructure Inc., a renowned patent troll.
• Antena TV Group, one of Romania’s key private broadcasters, a member of the Intact Group, with regard to different member of the Intact Group, with regard to different copyright-related matters in the relationships with cable companies, especially with RCS&RDS, the cable market leader.
• Apple, Inc. in respect of the intellectual property rights-related aspects entailed by the launch of the Romanian services of iTunes, the largest on-demand music and video store.
• Amazon Inc., the operator of the most important online retail platform in the world, in connection with the protection of its trademark against infringements of third companies, as well as in relation to the implementation of a complex system of agreements regarding the transfer of intellectual property rights.
• Dr. Max, one of the biggest pharmaceuticals retail chains in Eastern and Central Europe, owned by Penta Investments, on the acquisition of the largest and most important integrated pharmaceutical group in Romania, our mandate covering, amongst others, the effective transfer of the intellectual property rights, as well as an impact analysis of the acquisition on the intellectual property rights subject to multiple agreements concluded with third parties.
• Novartis Pharma GmbH and Novartis A.G., 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 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 companies.
• 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.
• 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.
• 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.
• Digi O2, a Taiwanese manufacturer of medical devices, in a dispute initiated by a presumed inventor of a medical device, both in the interlocutory injunction proceedings and in the proceedings on the merits of the case.
• Kaufland Romania, the country’s largest retailer of food products, in relation to a whole array of intellectual property law-related matters triggered by the organizing of a national advertising campaign promoting food products originating in Romania.
• Oxford University Press, the leading English university press trust, on the copyright and related rights regulatory framework in Romania.

Other representative mandates of our practice includes advising:

• BNP Paribas (former Fortis Group S.A./N.V.), one of the most important banking institutions in Belgium, in litigation proceedings against a Romanian-based insurance company, for the enforcement of the trademark owned by the client.
• Blue Air – Airline Management Solutions, leading Romanian low-cost airline company, regarding trademark portfolio management-specific issues ranging from registering with the Romanian State Office for Inventions and Trademarks an elaborate assignment agreement and ensuring the extension of protection of the Client’s relevant trademarks.
• Biotest, an important European producer of biological medicines, in a dispute with a Romanian importer regarding the unauthorized use of the Client’s protected trademark on products subsequently placed on the Romanian market.
• AbbVie, Inc. and several of its subsidiaries in connection with threats concerning the launch in Romania of a generic version of a top selling HIV medicine, more than 5 years before the expiry of the patent protection thereof.
• Arena S.A.S., a leading worldwide alliance of DYI products suppliers, in a court case concerning the continuous infringement of ARENA’s well known trademark “GO/ON!” by its former distributor, itself part of a European chain of DIY retailers.
• SSIF Broker, one of the most important brokerage companies in Romania, in connection with the negotiations leading up to the acquisition of specific brokerage software from an Indian developer.
• The Romanian branch of Save the Children Organization, the most reputed private global initiative for humanitarian aid to children, in respect of different contentious matters concerning the infringement of its exclusive trademark rights.
• L’Óreal Romania, the local subsidiary of the world’s largest cosmetics company, in several disputes concerning the infringement of its luxury division trademarks by Romanian entities via unauthorized import and the sale of counterfeit products.
• Deezer, the owner of the homonym online music streaming service, in connection with the extension of the company’s services in Romania, particularly regarding the negotiation with the Romanian body of collective management of the licensing fees for the service provided in Romania, after having managed to amicably settle a dispute with the collective management body regarding the non-payment of the amounts due.
• Heliae Development, a company active in the field of research and development of microalgae and other biological systems for the production, adaptation and innovation of products intended for marketing, in order to represent the client before the State Office for Inventions and Trademarks.
• Premier Capital, a top investment fund active in Malta and in the Baltic countries, in connection with the acquisition of the McDonald’s branch in Romania, our mandate covering both the analysis of the intellectual property aspects involved in the acquisition procedure and the drafting and negotiation of sales and franchise agreements.
• Romsys, one of the largest software developers in Romania, in an innovative dispute regarding the unauthorized use of the trade secret and other confidential client information by a competitor who obtained such information from a „due dilligence” report.
• Autonet Group, the largest Romanian retailer of motor vehicle spare parts, in connection with the import of independent after-market spare parts for motor vehicles, from the perspective of the new legal framework enacted by the legislator governing the penalties imposed in relation to the sale of counterfeit spare parts.
• CAT Music, the leading Romanian music record labels, in a dispute concerning the duty to pay to collective societies the music stamp tax, applicable to each record sold in Romania. This mandate provides us with the unique opportunity to explore the legality of a tax which has no parallel in the EU, since not being royalty-related and which directly finances the activity of collective societies.
• Millenium Pharmaceuticals, a leading manufacturer of innovative medicines, in connection with potential actions against threats of the launch of the generic medicines infringing the client’s exclusive patent rights.
• The Institute of History and Literary Theory “George Călinescu” and the National Foundation for Science and Art, in a complex dispute regarding the copyright translation of a work of Prince Dimitrie Cantemir, having as its object the alleged plagiarism by the new translator of the previous translation.
• Dieffenbacher GmbH, one of the most reputed German producers of machinery used in the wood processing industry, for the purposes of securing protection over its patent portfolio in Romania.
• Alka Co., a major Romanian FMCG producer, in two disputes regarding the infringement of its trademark designating the leading brand on the Romanian seed and nuts market, as well as the industrial design and model related to such trademark.
• Abbott Products Romania, in respect of the registration with the Romanian Trademarks Office of several trademarks serving as lead message bearers in a promotional campaign for anti-vertigo innovative medicines. Our mandate covers the entire registration procedure and the liaison with the Trademarks Office.
• Grindeks a.s., a leading Latvian innovative pharmaceuticals group with regard to several trademark-related disputes engaged against generic companies trying to obtain registration of confusingly similar trademarks for their generic products.
• A leading European broadcasting group, in respect of providing legal assistance and representation in what concerns all copyright issues involving the Client’s activity as the third largest private TV broadcaster in Romania.
• Egis Pharmaceuticals, in respect of several research mandates concerning the protection enjoyed in Romania by different European or international patents.
• Romanian Phonograms Producers’ Association (UPFR), as counsel for matters pertaining to the collective management of copyright in Romania.
• 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.
• 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.
• 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.
• 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 a Romanian brewer.
• 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.
• International Olympic Committee and the Romanian Olympic and Sports Committee, a prominent international sports organization and its affiliate in Romania, in several disputes concerning 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, recognized as such through international arrangements regarding the world sports movement and the organization of periodic sports competitions.
• Google, in respect of copyright-related issues concerning the revision of its current labour 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 labour agreements, so that copyright resulting from the work of the employees be protected in favour of our Clients.
• Hitachi Construction Machinery Europe, a leading machinery manufacturer, in respect of trademark infringement proceedings against its former Romanian distributor.
• 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.
• 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.
• 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.
• 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 Amoxiclav trademark against another European pharmaceutical company, in a case relating to unlawful import in Romania of counterfeit medicines under the Amoxiclav trademark.
• 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.
• Alcatel Lucent S.R.L., international producer and retailer of electronics, in acquiring the rights over inventions created by its employees in Romania.
• Palace Resort & Spa, a luxury hotel in Sibiu, with respect to its affiliation to the Hilton international hotel chain via the implementation of a franchise agreement, following the undertaking of a complex assignment involving an exhaustive due diligence, drafting comprehensive supporting documentation and negotiating the franchise contract (a novelty for Hilton Hotels in Europe).
• 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.
• 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.
• 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.
• 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.
• 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.
• Observatorul Cultural magazine, one of the oldest post-communist Romanian cultural magazines still appearing in print edition, on pro bono basis, in respect of different copyright aspects.
• 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.
• 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.
• CDK Global (Finland) OY, one of the leading providers of integrated IT solutions and digital marketing in the auto retail industry, in a complex dispute regarding the infringement of both the copyright and the protected trademark owned by our Client.
• An important international manufacturer of tobacco products, in connection with patents litigation aspects and in respect of potential patent infringement relating to enforcing a patent application.
• Otsuka Pharmaceuticals, a company dedicated to the research & development of highly-innovative medicines, in respect of a patent infringement matter relating to the early release of generics on the Romanian market, damaging a lead innovative medicine used in the treatment of nervous system conditions.
• The local subsidiary of Eli Lilly, one of the leading company in the pharmaceutical industry, with respect to the intellectual property aspects in the contractual agreements regarding cooperation with scientists who perform scientific research for the Client, in order to correlate our findings with copyright and patent law requirements.
• Laboratoarele Fares Bio Vital S.R.L., one of the most important herbal teas and natural remedies manufacturer, in a major project involving trademarks registered for dietary supplements and for medicines, which lead to a cross dispute with a leading generic pharma company before the Romanian Office for Inventions and Trademarks in opposition proceedings and before the courts in a trademark revocation claim.
• Top Lac Auto S.R.L., in defending against several alleged trademark infringements acts on the Client website with respect of third parties’ trademarks and in a dispute in which the trademark application filed by the Client was challenged by an earlier trademark’s owner.
• Tchibo Markenverwaltungs GmbH, one of the most important company in the coffee industry, in the opposition proceedings regarding a trademark application for registration of a highly similar sign with one of the earlier trademark owned by the Client, before the Romanian Office for Inventions and Trademarks.
• Fluidra Commercial S.A.U., a global leader in the production of equipment and chemicals for pools and swimming facilities, in relation to the unlawful use of its well-known CTX EU trademark, in a complex litigation proceedings involving trademark infringement and preliminary measures for securing evidence against the infringer.
• Ana și Cornel S.R.L., a large Romanian company acting in the meat industry, in connection with the IP matters in the labelling of the products, with a focus on trademarks and the risks and the implications both from the trademarks prosecution perspective and the consumers’ protection point of view.
• MLS Invest Trading S.R.L., a well-known company in food delivery services in Romania, in connection with specific queries relating to the various software license agreements and in the negotiations for concluding an agreement covering the European territory with respect to the coexistence of the parties’ trademarks.
• Societe Jas Hennessy, member of the LVMH Moet Hennessy Louis Vuitton Group, in relation the opposition proceedings before the Romanian State Office for Inventions and Trademarks concerning the registration by various companies of national trademarks consisting in signs identical to the Client’s well-known trademarks.
• Chipita Romania S.R.L., one of the fastest growing food companies developing activities in more then 50 countries, either directly or through strategic partnerships, as a portfolio manager for the Client’s Romanian trademarks, in assisting and representing the Client with regard to any and all proceedings before the Romanian Trademarks Office.
• Electrolux Romania S.A., a leading global appliance company with a century of activity in more than 150 markets every year, with respect to the marketing campaign for the launch on the Romanian market of a range of new products, from the trademark law perspective.
• Peacock’s Stores Limited, an old-established and successful fashion company, in representing the Client before Romanian State Office for Inventions and Trademarks in relation to act as portfolio manager for the trademarks of the Client with regard to all the proceedings for trademark registration, transfer and/ or renewal.
• Auto Car Group 1 Service S.R.L., one of the largest local auto service group, in connection with various trademark matters, both in defending against allegations of third parties regarding trademark infringement, as well as in challenging the Client’s trademark application for the registration of one of its trademarks.
• Epidemic Sound AB, an important online platform providing a wide library of music, in regular matters regarding the management of the IP rights of the artists, performers, with a focus on the mandatory collective management of the copyrights in Romania towards the client’s option to individually manage and collect the copyrights for the ambient music provided by the Client.
• Accenture Services S.R.L., a major company providing top-quality consulting, digital and technology services for companies operating in many industries, in a complex project requiring multidisciplinary legal expertise on various areas, including IP matters, with a particular focus on securing an effective protection of the Client’s trademarks and copyrights.
• Geokinetics Inc., one of the world’s largest independent land and seafloor geophysical companies, in the negotiations of a software license agreement to be entered into with a local firm active in geological, geophysical and the oil & gas business in Romania worldwide.
• Spotify, a renowned worldwide online music streaming service in relation to its materialized intention of entering the Romanian market, during the negotiations with UCMR-ADA, the competent collective management society in the music field in Romania and in concluding an agreement allowing the Client to provide its services in Romania, as well as in a day-to-day assistance in a project management of IP legal risks associated with the Client’s business model evaluated by reference to Romanian law and market practice.
• Fox Networks Group, a major actor in the telecommunications field, in connection with various IP issues in the audiovisual field, considering the particularities of the Romanian law.
• Belvedere Development S.R.L., an important local real estate developer, in a complex and multidisciplinary project regarding a transaction of immovable assets in respect of the legal aspects regarding the intellectual property rights, including trademarks, copyrights and domain names, as well as in concluding the trademarks’ transfer and license agreements.
•  Zscaler Inc., a global cloud-based information security company, in a major project of due diligence, in assessing the misclassification risks raised by the technology transfer agreements concluded under various jurisdictions law, with implications under the Romanian law, with a focus on the copyrights issues.
• Ansamble Catering & Services S.R.L., a company in the restaurant and catering industry in the legal proceedings involving intellectual property and unfair competition aspects in the context of a breach of a non-compete clause in a contract.
• An important company in the local pharmaceutical industry involved in the wholesale distribution and import/export of medicines and medical devices, in a project of due diligence assessment from the intellectual property perspective, in order to identify the risks in the acquisition of another major Romanian distributor of pharmaceutical products.
• Tencent Holdings Limited, the world’s largest video game company, one of the world’s most important social media, venture capital and investment corporations, operating both in China and globally, in a project regarding the financial implications and regulatory risks in the context of the launch of a streaming platform for entertainment.
• Major Chinese investors both on the Romanian and the European markets, as a manager of their intellectual property rights, with a focus on trademarks and designs, in the proceedings of registration, renewal and other related proceedings before Romanian State Office for Inventions and Trademarks and the European Union Intellectual Property Office.