REPRESENTATION IN LITIGATIONS

The representation in the law court is ensured by lawyers specialized in industrial property - www.teodoru.com, with an experience of over 8 years in litigations concerning industrial properties. The representation in litigations refers especially to summoning with the purpose of recovering the material and moral prejudice incurred by the breaking of the industrial property rights, in objections, counter-claims, appeals related to the following types of litigations (exemplification):

1. Trademark Litigation, related to unfair competition and counterfeit.

The proceedings for counterfeiting are instituted by the holders of the trademarks against third parties that use in their commercial activity:

- a sign that is identical with the trademark for products or services identical with the ones for which the trademark was registered;

- a sign which, because of its total or partial resemblance with the trademark or because of the total or partial resemblance of the products or services to which the sign, with the products and services for which the trademark was registered, is applied, would lead to the risk of confusion, including the risk of associating the trademark with the sign, in the public’s perception;

- a sign totally or partially resembling with the trademark for products and services different from the ones the trademark was registered for, when it gained success in Romania and if, by using the sign, without any specific reasons, one could take advantage of the distinctive character or the renown of the trademark or the use of the sign would bring a prejudice to the trademark’s holder. In particular, the courts can be required to forbid the following:

a) the applying of the sign on products or packages;

b) the offering of the products, the commercialization or holding them for this purpose or, as the case may be, the offering or provision of services under this sign;

c) the import or export of products under this sign;

d) the utilization of the sign on documents or for publicity.

The proceedings for counterfeiting can also be instituted by the licensee, with the consent of the trademark’s holder. In case of exclusive license, the licensee can institute proceedings for counterfeiting if, after having notified the trademark’s holder with regard to the counterfeiting documents it is aware of, the latter did not take action within the term required by the licensee. When proceedings for counterfeiting have been instituted by the holder, any of the licensees can interfere with the lawsuit, asking for recovery of damages and moral damages for the prejudice incurred by the counterfeiting of the trademark.

Cases related to custom operations related to counterfeited goods

In the same was as appeals against the official reports of the customs for blocking the merchandise that is supposed to be counterfeited, appeals based on Law No. 344/2005 regarding some measures for ensuring the compliance with the intellectual property rights within the custom operations, that came into force on February 3rd, 2006, and its application Norms.

2. Trademark Cancellation for lack of usage for more than 5 years.

4.1 In court claims related to trademark calcellation for not use of 5 consecutive years, the legal action can be started by any interested person if the holder, without any justified reasons, has not actually used the trademark on Romanian territory.

4.2 Demands for declining the rights over a trademark that became customary. After the registration date, the trademark can become customary in the trade of a product or service it was registered for, as a result of an action – improper marketing - or of the holder’s inactivity – the lack of a marketing strategy that would draw attention on the fact that the trademark is a trademark and not a generic word.

4.3 Demands for declining the rights over a trademark for the misleading regarding the nature, quality or geographical origin of products or services. It is applied when a trademark, as a result of the way it is used, has become susceptible to mislead the public, especially with regard to the nature, quality or geographical origin of products or services it was registered for.

4.4 Demands for declining the rights over a trademark in case such trademark was registered by another person than the one who would have been entitled to require its registration.

4.5 Legal actions for canceling the trademark as a result of its registration in ill faith.

4.6 Legal actions for canceling the trademarks that do not meet the legal requirements to be registered; they lack a distinctive character, they are made exclusively of signs or indications that have become customary in everyday language or in loyal and constant trade practices, they are made exclusively of references to specie, quality, quantity, destination, value, geographical origin etc., the ones made exclusively of the shape of product, which are required by the nature of the product, the ones that are able to mislead the public with regard to the quality or nature of the product and service, those that include a geographical indication, those that mislead the public with to the true origin place etc.

4.7 Legal actions for the cancellation of the trademark if: - it is identical to a previous trademark, and the products and services, which the registration of the trademark was required for, are identical to the ones for which the previous trademark is protected; - it is identical to a previous trademark and it is destined to be applied to some products and services that are identical or similar to those for which the previous trademark is protected, if there is a risk of confusion for the public - it is identical or similar to a notorious trademark in Romania for identical or similar products and services, on the date the trademark registration application was filed; - it is identical or similar to a notorious trademark in Romania for products and services that are different from the ones which the trademark whose registration is required refers to and if, by the unjustified utilization of the latter, one could take advantage from the distinctive character or by the renown of the notorious trademark or if such utilization could bring prejudices to the holder of the notorious trademark; - if previous rights with regard to any industrial property right protected or with regard to a copyright are prejudiced:

4.8 Actions as a result of the failure to comply with the property transfer contracts or contracts concerning the transfer of the right to use industrial property rights: License, assignment, franchise contracts, exploitation of the invention patents, assignment of patrimonial copyrights. For example, the legal actions instituted by the holders of trademarks against the licensee who has failed to comply with the clauses of the license contract, regarding the period of utilization, the image of the trademark and the nature of the products and services for which the license was granted, the territory on which the trademark can be used, the quality of products fabricated or services provided by the licensee under the trademark which the license was granted for.

4.9 Appeal against the resolution of the reexamination commission of OSIM regarding the rejection of trademark registration.

4.10 Petitions against the decision of the State Office for Inventions and Trademarks regarding the registration of assignment or license with the National Trademark Registry.

5. Related to copyrights:

5.1 Acknowledgement of copyrights.

5.2 Recovery of patrimonial copyrights.

6. Litigations regarding the trade names:

The legal action for the cancellation of the trademark, instituted by the holder of a previous right over a trade name (the name of a trading company).

7. Litigations related to domains;

8. Criminal issues

Criminal complaints and representation before police, prosecutor’s office and courts in penal files regarding legal aspects related to the intellectual property, including in counterfeiting offences, unfair competition and copyright. The holder of the trademark may require the competent law court to order the seizure and destruction of the products that bear counterfeited trademarks, as well as of materials and equipments that directly served to the committing of such offences.

9. International trademark litigation services are handled by www.intellektus.com, as well as patent litigation, copyright litigation and domain name disputes.

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Home About us Services Trademarks Patents Designs/Models Copyrights Contracts Litigation Links Contact	REPRESENTATION IN LITIGATIONS The representation in the law court is ensured by lawyers specialized in industrial property - www.teodoru.com, with an experience of over 8 years in litigations concerning industrial properties. The representation in litigations refers especially to summoning with the purpose of recovering the material and moral prejudice incurred by the breaking of the industrial property rights, in objections, counter-claims, appeals related to the following types of litigations (exemplification): 1. Trademark Litigation, related to unfair competition and counterfeit. The proceedings for counterfeiting are instituted by the holders of the trademarks against third parties that use in their commercial activity: - a sign that is identical with the trademark for products or services identical with the ones for which the trademark was registered; - a sign which, because of its total or partial resemblance with the trademark or because of the total or partial resemblance of the products or services to which the sign, with the products and services for which the trademark was registered, is applied, would lead to the risk of confusion, including the risk of associating the trademark with the sign, in the public’s perception; - a sign totally or partially resembling with the trademark for products and services different from the ones the trademark was registered for, when it gained success in Romania and if, by using the sign, without any specific reasons, one could take advantage of the distinctive character or the renown of the trademark or the use of the sign would bring a prejudice to the trademark’s holder. In particular, the courts can be required to forbid the following: a) the applying of the sign on products or packages; b) the offering of the products, the commercialization or holding them for this purpose or, as the case may be, the offering or provision of services under this sign; c) the import or export of products under this sign; d) the utilization of the sign on documents or for publicity. The proceedings for counterfeiting can also be instituted by the licensee, with the consent of the trademark’s holder. In case of exclusive license, the licensee can institute proceedings for counterfeiting if, after having notified the trademark’s holder with regard to the counterfeiting documents it is aware of, the latter did not take action within the term required by the licensee. When proceedings for counterfeiting have been instituted by the holder, any of the licensees can interfere with the lawsuit, asking for recovery of damages and moral damages for the prejudice incurred by the counterfeiting of the trademark. Cases related to custom operations related to counterfeited goods In the same was as appeals against the official reports of the customs for blocking the merchandise that is supposed to be counterfeited, appeals based on Law No. 344/2005 regarding some measures for ensuring the compliance with the intellectual property rights within the custom operations, that came into force on February 3rd, 2006, and its application Norms. 2. Trademark Cancellation for lack of usage for more than 5 years. 4.1 In court claims related to trademark calcellation for not use of 5 consecutive years, the legal action can be started by any interested person if the holder, without any justified reasons, has not actually used the trademark on Romanian territory. 4.2 Demands for declining the rights over a trademark that became customary. After the registration date, the trademark can become customary in the trade of a product or service it was registered for, as a result of an action – improper marketing - or of the holder’s inactivity – the lack of a marketing strategy that would draw attention on the fact that the trademark is a trademark and not a generic word. 4.3 Demands for declining the rights over a trademark for the misleading regarding the nature, quality or geographical origin of products or services. It is applied when a trademark, as a result of the way it is used, has become susceptible to mislead the public, especially with regard to the nature, quality or geographical origin of products or services it was registered for. 4.4 Demands for declining the rights over a trademark in case such trademark was registered by another person than the one who would have been entitled to require its registration. 4.5 Legal actions for canceling the trademark as a result of its registration in ill faith. 4.6 Legal actions for canceling the trademarks that do not meet the legal requirements to be registered; they lack a distinctive character, they are made exclusively of signs or indications that have become customary in everyday language or in loyal and constant trade practices, they are made exclusively of references to specie, quality, quantity, destination, value, geographical origin etc., the ones made exclusively of the shape of product, which are required by the nature of the product, the ones that are able to mislead the public with regard to the quality or nature of the product and service, those that include a geographical indication, those that mislead the public with to the true origin place etc. 4.7 Legal actions for the cancellation of the trademark if: - it is identical to a previous trademark, and the products and services, which the registration of the trademark was required for, are identical to the ones for which the previous trademark is protected; - it is identical to a previous trademark and it is destined to be applied to some products and services that are identical or similar to those for which the previous trademark is protected, if there is a risk of confusion for the public - it is identical or similar to a notorious trademark in Romania for identical or similar products and services, on the date the trademark registration application was filed; - it is identical or similar to a notorious trademark in Romania for products and services that are different from the ones which the trademark whose registration is required refers to and if, by the unjustified utilization of the latter, one could take advantage from the distinctive character or by the renown of the notorious trademark or if such utilization could bring prejudices to the holder of the notorious trademark; - if previous rights with regard to any industrial property right protected or with regard to a copyright are prejudiced: 4.8 Actions as a result of the failure to comply with the property transfer contracts or contracts concerning the transfer of the right to use industrial property rights: License, assignment, franchise contracts, exploitation of the invention patents, assignment of patrimonial copyrights. For example, the legal actions instituted by the holders of trademarks against the licensee who has failed to comply with the clauses of the license contract, regarding the period of utilization, the image of the trademark and the nature of the products and services for which the license was granted, the territory on which the trademark can be used, the quality of products fabricated or services provided by the licensee under the trademark which the license was granted for. 4.9 Appeal against the resolution of the reexamination commission of OSIM regarding the rejection of trademark registration. 4.10 Petitions against the decision of the State Office for Inventions and Trademarks regarding the registration of assignment or license with the National Trademark Registry. 5. Related to copyrights: 5.1 Acknowledgement of copyrights. 5.2 Recovery of patrimonial copyrights. 6. Litigations regarding the trade names: The legal action for the cancellation of the trademark, instituted by the holder of a previous right over a trade name (the name of a trading company). 7. Litigations related to domains; 8. Criminal issues Criminal complaints and representation before police, prosecutor’s office and courts in penal files regarding legal aspects related to the intellectual property, including in counterfeiting offences, unfair competition and copyright. The holder of the trademark may require the competent law court to order the seizure and destruction of the products that bear counterfeited trademarks, as well as of materials and equipments that directly served to the committing of such offences. 9. International trademark litigation services are handled by www.intellektus.com, as well as patent litigation, copyright litigation and domain name disputes.	News Important ! The Romanian Trademark Law 84/1998 is essentially changed www.GlobalIpMarket.com - international sell and licence of trademarcs, designs and patents. www.Intellektus.com - Global Provider of Trademark, Design, Patent, Domain and Copyright Registration, Renewal and Litigation Services. All news Newsletter Name: Email: Newsletter list
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