What advantages does registering a Community trademark provide to your clients?

Business Review, June 11-18, 2012

The formalities for the registration of a Community trademark obviously stand out due to flexibility and reduced costs compared to the international trademark registration procedures based on the Madrid Agreement.

The registration of a Community trademark involves a single procedure to be followed and a single application referred to a single competent office and, in exchange, one obtains valid protection on the territory of 27 countries, encompassing a market which comprises more than 350 million persons. The registration of a Community trademark has the same effects in all 27 EU member states, without being conditioned by prior national registration of the trademark.

Moreover, a Community trademark application which is not accepted for registration may be turned into a national trademark application.

One should also take into account the costs of registering a Community trademark, which are considerably lower (they are paid only once) compared to the international trademark registration system based on the Madrid Agreement, in the same number of countries.

How do you perceive the evolution of the complexity of disputes concerning the counterfeiting/illegal use of trademarks, inventions and other intellectual property rights over the past years?

Free economy is based on the principle of competition and competitiveness. A successful idea, a well-known brand which attracts consumers through quality guarantee and usefulness of the products and services which the brand is associated with also provide ideas to the less honest economic players who want fast profit with minimum costs and with others’ ideas. This kind of phenomenon is inherent to a free market. Obviously, over the past years there has been an increase in the number of IP disputes and, as for the complexity of these cases, globalisation is key.  In this regard, one should mention a recent litigation handled by PN&A in which an inventor of Romanian origin residing in France who had presented a product of his at an invention fair in the USA is involved in a trial against two multinational companies (a French one and an American one) in France with regard to the exclusivity of use and the authorship of the invention.

What were the most important cases in which you provided legal assistance in the intellectual property area in recent years?

  1. Romanian Tennis Federation – legal assistance and representation before the State Office for Inventions and Trademarks in the claim lodged by Tiriac Group regarding the cancellation of the registration of the “OPEN ROMANIA”/”BCR OPEN ROMANIA” trademark owned by the Romanian Tennis Federation (FRT).
  2. SIVECO Romania legal assistance regarding the opposition of SIVECO Romania against a trademark similar to the 26 commercial trademarks registered by SIVECO Romania, as well as regarding the registration of SIVECO Romania’s rights over tens of computer programs.
  3. Lidl Romania – legal assistance regarding the registration of new trademarks on the Romanian territory, as well as in connection to the applicability of copyright law regarding Lidl’s advertisement materials in Romania.
  4. Asseco SEE – legal assistance and representation before the State Office for Inventions and Trademarks regarding the national registration of 8 Asseco SEE trademarks.
  5. Primagaz Romania – legal assistance in relation to obtaining the license for the Primagaz trademark from Primagaz France, as well as in connection to the registration of two national combined trademarks.

Main clients in recent years:

ArcelorMittal, Asseco SEE, Auchan, Credit Europe Bank, Deutsche Leasing, Dorma, ECS, Romanian Tennis Federation (FRT), Fondul Proprietatea, Immofinanz, Lidl Romania, Primagaz Romania, Scandia, Shell Gas, SIVECO, Orange, Oresa Ventures.

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