International Intellectual Property – Romania – Raluca Vasilescu

Cabinet M. Oproiu is exclusively involved in the field of intellectual property matters. We cover the full spectrum, from prosecution of patents, trademarks and designs in Romania, to litigation for patents, trademarks and designs. In Europe, we file and prosecute European patent applications as well as trademarks and designs before EUIPO (formerly OHIM).

PATENTS

Our experienced team of patent attorneys and scientists can advise and guide you through the entire pre-patenting and patenting process regardless of your area of technology.
• Acquiring national and European patents, including opposition proceedings before the competent authorities;
• Obtaining a Supplementary Protection Certificate;
• Portfolio administration, including annuity payments;
• Qualified technical and juridical translations;
• Patent searches with or without opinion as to the patentability;
• Filing PCT applications, including entering national or regional phase;
• Licensing issues;
• Litigation, including patent cancellation and patent infringement.

One particular focus is directed towards the prosecution of national and European patent applications in examination, procedure of revocation and appeal proceedings before the national courts and the European Patent Office, as well as to the national and European trademarks.

Our competitive edge as recognised by our clients refers to patent drafting for the European Patent Office both for the clients of the cabinet and for third parties, patent prosecution, prosecution of applications for supplementary protection certificates and to patent litigation (both cancellation and infringement proceedings) and drafting opinions on the legal validity and infringement of industrial property rights.

TRADEMARKS AND DESIGNS

Trademarks and designs play a vital role in today’s economic environment. A successful trademark is worth more than other traditional assets.

At Cabinet M. Oproiu, we have the expertise to advise and guide our clients during the stages of creating a new brand or new design by helping them to select the one with the best chance of being registered as a trademark or design in the jurisdiction(s) of interest.

Our professional services include:
• Registration of Romanian marks and designs;
• Registration of European trademarks and community designs before the EUIPO;
• Filing trademark applications with WIPO under the Madrid Agreement or Protocol;
• Opposition, appeal proceedings in respect to national trademarks and designs, European trademarks and Community designs;
• Portfolio administration, including renewals;
• Qualified juridical translations;
• Trademark searches, design searches, watching services;
• Registering Internet domain names, including full assistance in alternative dispute resolution (ADR) proceedings;
• Licensing issues.

ENFORCEMENT

Enforcement services for our clients include application for action of the customs authorities for the protection of IP rights, a service for which we are highly qualified. Based on our experience, we offer advice in matters of IP that extend beyond the traditional fields or combine two or more such domains:
• Litigation in Romania related to infringement and/or counterfeit and nullity of patents, trademarks or designs, unfair competition;
• Representation before the Romanian customs authorities and police for infringement or counterfeit matters;
• Enforcement of IP rights in the pharmaceutical field, including but not limited to advice on validity and infringement prior to a litigation, SPC matters and data exclusivity;
• Industrial property – related matters of the due diligence enquiries.

The usual workflow develops as follows: all enquiries received are formally checked and registered by the front office and transferred to the firm’s partner(s) that performs an initial substantive evaluation, assigning each matter to a person that will be the primary contact responsible for prosecuting said matter, along with possibly additional persons that will cooperate when necessary. The assigned person is chosen depending on the type of matter and necessary level of expertise – with simple matters (such as filings) being prosecuted by basic attorneys with the support of paralegals, while complex matters are prosecuted by teams composed of the highest specialised attorneys. On occasion, if a matter so requires it, the teams also include external experts with special skills in a certain field.

Each matter is coordinated on a case-by-case basis. We primarily focus on efficiency, making the best use of resources while aiming to ensure the highest level of expertise in accordance with the particulars of each matter.

One of the few positive outcomes of the COVID-19 pandemic is that all members of the OPROIU team are connected by a WhatsApp group and are instructed to permanently monitor the group conversations. In case an urgency surge and/or a difficult matter should arise, the relevant partner can easily assign the matter and can cooperate with the appropriate colleague(s), ensuring prompt handling of the matter.

The same principle applies for other close collaborators, such as the lawyers from other firms with whom we cooperate on some litigations, as well as translators.

IP strategy should encompass all the items of your question and comprises more areas, such as patenting, where applicable.

During our 30 years of experience, we have noted that many problems resulting in litigation originate from bad or insufficient IP strategy. This applies, regardless of the size of the company.

Sources of insufficient IP strategy include many decision makers’ belief that it is not a good idea to spend money and time on building a strong IP, as IP would come along with the marketing or other strategies.

Disputes are the matters that tend to become the most active at present – these weighing more and more against standard registration matters.

One of the challenges is the one identified in question 3: the lack of preoccupation of the decision makers when it comes to IP strategy.

Another challenge is how to deal with infringement.

Finally, the other key challenges include the IP education of the consumers as well as the IP education of the producers in a competitive market, in addition to building respect for all IP assets. These are core strategic elements that form the bulk of my activity.

Indeed, a component of IP work relates to IP claims on the Internet, including domain name disputes. I do not have recent cases in this area, concluded on the merits of the case by the competent authorities, but we do have cases settled on amiable bases between parties by way of voluntary transfer of the domain name containing a registered mark – with the reimbursement of the legal costs granted by WIPO in favour of the trademark owner.

EU unitary rights and procedural harmonisation significantly improve cross-border enforcement. In addition, in enforcing IP on a cross-border scale, there needs to be an inherent collaboration between the attorneys and the customs authorities from the various territories in order to minimise the impact of counterfeiting and to reduce the damage resulting from multiple possible infringements.

Due diligence is very important; however, this is a broad concept. There is no one-size-fits-all in this field.

Each case has its own particulars. In our opinion, care should be taken to reach an equilibrium between missing some crucial aspects in the due diligence and over-researching unimportant details, which leads to inflated costs and time lost.

In IP, the best relationships are the personal ones. Stability of the attorneys in the firms is larger than in other consultancy areas. The attorneys of our firm have established many personal relationships across the years.

Following the height of the pandemic, video conferences are now used more widely than before, connecting the members of our firm to clients and peers all over the world.

Moreover, the attorneys of our firm are members of the major IP organisations (EPI, ECTA and INTA) regularly participating in video conferences.

The trademark law changed in July 2020. The new implementing regulation was published on 7 October 2022.

In regards to patents, some changes will occur in relation to the application of the Unitary Patent Package.