In the business environment, having a registered trademark and/or a registered design adds value to your Company. If the business is local/Romanian, filing for registration with the Romanian Trademarks Office (OSIM) is one of the options.
Prior to filing for trademark registration we kindly advise to not skip the step of “preliminary search”
The preliminary search is the most effective way to avoid litigation or other conflicts which can arise from identical/similar trademark registration, for a fair professional fee.
To that end the preliminary search covers the OSIM, EUIPO and WIPO databases, to establish whether the trademark for which the registration is sought is available or not – namely to search if there are any prior identical/similar trademarks that can be basis of opposition against your trademark.
The preliminary search also determines the correct and relevant Nice Classification for your trademark.
Once the trademark is registered, our work continues with monitoring services in order to dismiss any attempt of third parties to register identical/similar trademark for identical/similar goods/services.
When such attempts are made we advise our clients on filing opposition against the unlawful request for registration.
Trade mark monitoring is of significant importance considering that, according to Law no. 84/1998, OSIM has no obligation to check whether the later trademark applied for registration is identical/similar in reference to earlier registered trade marks.
While you’re focusing on your business your attention, in most cases, will not cover the immediate need to act against the attempts of third parties to register identical/similar trade marks. In any case, your attention will be divided between the business development and the supervision of your intellectual property rights.
Trademark monitoring, as a professional service to be of service for you, leaves the care of filtering every filing for registration to identify potential infringements in our hands.
If such attempts on your earlier rights are identified you will receive a report along with our recommendation on how to act further.
Oppositions, Appeals and Documented Reply to Notices of Provisional Refusal
If during the Trademark monitoring the need arises or upon your request, we can file and argue before OSIM oppositions and appeals.
The oppositions and the appeals can be filed only within a time-limit, as provided by the law. Filing outside the time-limit will lead to rejecting the opposition/appeal as inadmissible/non-existent.
In cases were OSIM issues Notices of Provisional Refusal we can file a documented reply to counteract the provisional refusal for registration.
Litigation for trademark annulment
If for any reason you lost the chance of filing for opposition or appeal, we can assist you for filing at the Bucharest Tribunal a claim for trade mark annulment and we can provide you legal representation all the way.
As examples of grounds for trade marks annulment: the trademark lacks distinctness; the trademark is descriptive; has been registered in bad-faith; infringes the rights resulting from an earlier trademark.
The plaintiff is such actions can be the owner of the earlier trademark or any other person that can justify a legitimate interest to act, according to the law.
Acting against Counterfeiting
One eye is permanently on the online environment to detect possible counterfeiting. The other covers the offline.
We act for our clients by sending cease & desist letters or by compelling the offenders to immediately cease any act of encroachment and to sign commitments under severe penalties.
We provide legal assistance for our clients in customs procedures on industrial property protection to prevent and stop the placement on the market of counterfeit products.
If necessary we can manage the civil and criminal prosecution of illicit acts along with the claim for damages.
Trademark Assignment / License Agreements / Trademark exploitation
Indirectly or directly you will aim to gain profit by exploiting your registered trademark, as efficient as possible. We can advise you how to legally reach that end.
Negotiating and drafting Agreements of Trademark Assignment and License Agreement (exclusive or non-exclusive) is one part of the legal advice.
You can also seek our legal expertise for trademark evaluation followed by share capital increase with the evaluated amount, formalities included.
The trademark/the trademark family can also be regarded as security for loans (e.g.: bank loans). We will draft the papers for such cases.
Drafting Franchise Agreements, including Franchise Manuals, is also of importance for us and for our clients.
Click here to see the latest trademark registrations.