Intellectual property in Romania

Tuca Zbârcea & Asociatii

Tuca Zbârcea & Asociatii has a top-notch practice that covers the full spectrum of work in the IP space. On the advisory side, certified IP counsellor Ciprian Dragomir leads the team, while on the litigation front, partner Ioana Hrisafi is the key name. Several major household name clients trust the practice to handle a range of trade mark, patent and copyright issues, including anti-counterfeiting initiatives, corporate support, and licensing. Managing associate Bogdan Halcu is also noted.

Practice head(s):

Ciprian Dragomir; Ioana Hrisafi

Testimonials

‘This firm is head and shoulders above the rest and not only as regards IP but for other areas as well. They are a great team, demonstrating a genuine understanding of the relevant frameworks, business concerns and their impact on clients’ operations. Whenever I reach out to them, they are responsive and give practical advice, carefully assessing the risks and putting forward clever recommendations. It’s an absolute pleasure to be working with them.’

‘Excellent advice as regards trade marks, copyright, anti-counterfeiting and contraband. They have a dedicated team of lawyers with years of expertise in IP, some of them being also certified IP counsellors. They are capable to cover IP disputes as well. This is an excellent mix which works really well for big clients. They combine business and legal perspectives, are resourceful and able to cover quickly IP matters.’

‘Bogdan Halcu is particularly efficient and knowledgeable when it comes to IP and has excellent technical skills.’

Key clients

Vodafone

Philip Morris

Carrefour

Untold SRL

Neversea SRL

Romanian Football Federation

Mandragora

Atlassib

Expur

Comite Interprofessionnel du Vin de Champagne

Work highlights

  • Advising Vodafone on the IP issues linked to its acquisition of Liberty Global’s Romania subsidiary.
  • Assisting Expur, a Romanian oil refining company, with the prosecution of several trade marks.
  • Acting for Carrefour in several trade mark and design counterfeit cases.

Buzescu Ca

Buzescu Ca is the IP firm of choice for several global brands in the technology, pharmaceutical, and consumer goods sectors. The firm has been particularly active on the trade mark protection front, and is also highly experienced in contentious patent claims and advising on seizure of counterfeit goods. Adrian Tomescu leads the team, which includes highly regarded senior associate Corina Papuzu.

Practice head(s):

Adrian Tomescu

Testimonials

‘The team provide focused advice that is directly catered and unique for us. They turnaround work fast and efficiently. They will go above and beyond to provide guidance that they think is relevant to us.’

‘Corina Papuzu is very efficient in the provision of her advice and will break down steps that we need to follow in simplistic ways to make things easy for us.’

Work highlights

  • Advising Amazon on its opposition to the registration of an infringing trade mark in Romania.
  • Representing Synthon, a generic drugs manufacturer, in its defence of multiple allegations of patent infringement made by Teva relating to a drug for treating neurological diseases.
  • Advising Clarins on its opposition to the registration of trade marks infringing two of the client’s registered brands, Aura and Angel.

CMS

CMS acts for several clients in the technology, life sciences, media and manufacturing sectors. The team's trade mark protection work is particularly notable, and it also has a niche in IP related to film production projects. Litigation specialist Gabriel Sidere and senior associate Valentina Parvu are key names.

Practice head(s):

Horea Popescu; Gabriel Sidere; Valentina Parvu

Key clients

Radio Max Romania

REWE

Work highlights

  • Advising Radio Max Romania on acquiring licences from local copyright collective management organisations for its online radio launch.
  • Representing a major online retailer in a trade mark litigation claim concerning the registration of a similar trade mark.
  • Advising an industrial company on a potential trade mark and domain name infringement claim by a Romanian company in the same industry.

Musat & Asociatii

Musat & Asociatii fields a sizeable team of dedicated lawyers with strong expertise in trade mark, design and patents. The team has a niche focus on matters relating to online music services, with Spotify a major client, and is also highly experienced in IP relating to the pharmaceutical industry and the charity sector. The highly experienced Paul George Buta leads the team, which also includes  managing associates Julieta Sfeclă and Dan Minoiu.

Practice head(s):

Paul George Buta

Key clients

Deutsche Telekom

Arena

CDK Global

Cat Music

Spotify

Save The Children

Fluidra Commercial

CoPeerRight Agency

Chipita

Work highlights

  • Advising Deutsche Telekom on the management of its trade mark portfolio, including registrations and enforcement.
  • Representing the global alliance of DIY suppliers, Arena, in litigation concerning the infringement of its ‘GO/ON!’ trade mark.
  • Representing CDK Global, a leading producer of fleet management software, in a dispute with its former Romanian licensee, involving copyright infringement.

Popovici Nitu Stoica & Asociatii

Popovici Nitu Stoica & Asociatii is particularly sought after by clients in the software, manufacturing and consumer goods industries to handle the full range of issues, including trade mark protection, litigation, licensing, and corporate-related IP support. The firm's advice to tennis player Simona Halep on IP-related matters, including the player's endorsement agreements, is an example of its expertise in more niche areas. Practice head Cristian Popescu has good experience in contentious and non-contentious matters.

Practice head(s):

Cristian Popescu

Key clients

Simona Halep

Dedeman

Auchan

Ameropa

Albalact

Orsay

Medisport

Pietta Glass Working

Greentek

Medicover

SAP Romania

Asseco SEE

Siveco

Xella

Unilever Romania

Work highlights

  • Advising tennis player Simona Halep on IP-related matters, including the negotiation of several endorsement agreements, including one with Nike.
  • Assisted Auchan with IP issues linked to the development of wildlife documentary, Untamed Romania.
  • Acting for Romania’s largest dairy producer, Albalact, in several trade mark disputes involving key brands such as Zuzu and Raraul.

Simion & Baciu Law Firm

Simion & Baciu Law Firm is a brand new IP and TMT boutique established by highly rated co-managing partners, Ana-Maria Baciu and Cosmina Simion, who previously led the team at Nestor Nestor Diculescu Kingston Petersen. The practice acts for clients across the IT, gambling, retail, life sciences and consumer goods space, and has strong expertise in contentious and non-contentious issues. Andreea Bende is also popular with clients.

Practice head(s):

Ana-Maria Baciu; Cosmina Simion; Andreea Bende

Testimonials

‘Romanian trade mark law is particularly nuanced, and Simion & Baciu have been invaluable in navigating us through these nuances and providing clear, practical and commercially driven advice.’

‘We believe they have a deep and understanding of the IP laws and they are able to clearly present and frame the matter.’

‘Andreea Bende is a smart, caring and extremely agile professional in IP; she is responsive, is not stopped by difficulties and is truly committed to obtain the best result of each of her cases.’

‘Ana-Maria Baciu is a powerful leader in IP law, with high professional and ethical standards. In addition, she values personal relationships, which makes her relationship with clients very valuable.’

Key clients

Softwin SRL / BitDefender IPR Management Ltd. (Bitdefender)

Sky International

Heineken Romania

Philip Morris group of companies

Skin Media

Bilka Steel

French Revolution

Evensys Consult

Intehno Eco Industrial

Arsia Production

Finsource

Formula One Licensing

Zamfirescu Racoti Vasile & Partners

Zamfirescu Racoti Vasile & Partners has a very strong reputation for contentious IP. The firm has a good success rate defending and pursuing patent, trade mark and copyright claims for clients across a range of industries. Alina Tugearu oversees an experienced team of litigators, including Cosmin Vasile and Calin-Andrei Zamfirescu.

Practice head(s):

Alina Tugearu

Testimonials

‘Our experience with their team has always been a success, both in human and professional terms.  Their strengths and key capabilities include their dedication, prompt response, perfect knowledge of the matters in dispute both from a substantial law and a procedural law point of view, strategic vision and delivery of best possible outcome for a fair cost.’

‘Cosmin Vasile and Alina Tugearu are the team that we have worked with for the past few years in intellectual property matters, most of which related to patent disputes. Their approach is very hands-on, with excellent delivery results. Cosminâ’s strategic vision and advocacy skills combined with Alina’s full grasp of all details of the case and cut-through approach in court lead to the best of results. What we appreciate most is their dedication and clarity in handling a case, which makes our collaboration a pleasure every time.’

Key clients

OMV Petrom

Dassault Systemes France

GlaxoSmithKline

Cabinet M. Oproiu, European Patent and Trademark Attorneys

The Union of Romanian Composers and Musicologists

Network One Distribution

Work highlights

  • Successfully defending OMV Petrom against a damages claim filed by the heir of Ion Basgan, a Romanian inventor, for the alleged exploitation, during the communist era, of two patents related to the oil drilling industry.
  • Advising Dassault Systemes France on the unauthorised use of its Catia software in Romania and the related infringement of its IP rights.
  • Representing The Union of Romanian Composers and Musicologists in two copyright infringement claims initiated against a musical events company producing and commercialising certain music CDs and DVDs in Romania.

Živko Mijatovic & Partners

Živko Mijatovic & Partners is an IP boutique with a strong regional network. The team, which is led by Monica Novac, has a strong track record in anti-counterfeiting work, and its clients benefit from the close relationship it has with other offices in South Eastern Europe.

Practice head(s):

Monica Novac

bpv Grigorescu Stefanica

bpv Grigorescu Stefanica provides strong support on a variety of IP issues, including trade mark and patent infringements, and copyright protection. The team, led by Anca Albulescu, acts for several clients active in the IT, media, manufacturing and industrial sectors.

Practice head(s):

Anca Albulescu

Key clients

Google

WBV Weisenburger Bau + Verwaltung GmbH

ARTmania

IHK Solingen

Mondialaqua

Work highlights

  • Acting for Google on a range of IP matters, including in a dispute with an individual over IP rights connected to Google Maps.
  • Advising ARTmania on IP issues linked to its collaboration with international artists for festivals and cultural events.
  • Representing Mondialaqua in a dispute challenging a utility model for water vending systems, which was similar to a product it manufactured.

DLA Piper Dinu SCA

DLA Piper Dinu SCA's IP practice provides valuable support to the firm's wider technology and corporate group. The firm is especially active in the technology sphere where it acts for start-ups and investors on the full range of IP issues. Counsel and practice head Ana-Maria Andronic 'has extensive experience in the field'.

Practice head(s):

Ana-Maria Andronic

Testimonials

‘Ana-Maria Andronic has extensive experience in the field and I absolutely trust the advice I’ve received from her. The communication has always been very clear and efficient. Finally, I found the quality of the work to be at really high standards.

‘They are very proactive and they absolutely are committed to making sure everything was properly considered and taken care of.’

Key clients

Early Game Partners

TMF Group

Knowledge Investment Group

Roboself

DCS Fast Link

Fintech OS

Icon Films

Tokinomo Marketing

Work highlights

  • Advising Early Game Partners on IP issues linked to its venture capital investment in SymphoPay, including securing IP rights over the technology and drafting software licensing agreements.

Drakopoulos

Drakopoulos has a track record handling IP-related matters, and the Greek firm's Bucharest branch advises several international companies on all aspects of their trade mark and patent management. Adrian Roseti is a registered IP agent with a good track record in trade mark infringement disputes.

Practice head(s):

Adrian Roseti

Testimonials

‘We are very content with Adrian Roseti’s work, especially due to his very prompt responses to urgent matters, affordable fees and high success rates.’

Key clients

Animaccord

Solaris

Viko

Chipita

Nestle

Ficosota

Subway

Indivio

Tish & Snooky’s

Osram

Vitaldent

Work highlights

  • Acted for Solaris in its successful opposition to the Romanian registration of Hyundai Motor Company’s Solati trade mark.
  • Advising Subway on various IP issues, including trade mark registrations, licensing and enforcement.
  • Representing Vigoss Tekstill in a trade mark infringement concerning the Vigoss trade mark.

Nestor Nestor Diculescu Kingston Petersen

At Nestor Nestor Diculescu Kingston Petersen, senior associate Alina Tace leads the team, which handles contentious and non-contentious matters in the IP space. Former joint heads Ana-Maria Baciu and Cosmina Simion left to establish IP boutique Simion & Baciu Law Firm.

Practice head(s):

Alina Tace

Key clients

Heineken

Pro TV

Softwin/BitDefender

Philip Morris

Bilka Steel

Borusan Mannesmann

Steak N Shake

Nala Cosmetics

Diverta Group

Work highlights

  • Representing Diverta Group in two trade mark-related disputes concerning the alleged infringement of two of its brands.
  • Acting for Bitdefender IPR Management in a domain name dispute relating to several domains registered by the opponent.
  • Representing Borusan Mannesmann in an unfair competition claim raised against a Romanian company that misled customers by claiming it was affiliated with the client.

RTPR | Radu Taracila Padurari Retevoescu SCA

RTPR | Radu Taracila Padurari Retevoescu SCA stands out for its extremely good contentious expertise, where disputes partner Valentin Berea and of counsel Lucian Mihai have notable track records. The team is especially experienced in the copyright space, and also acts for consumer goods and financial services sector clients on trade mark protection issues.

Practice head(s):

Valentin Berea; Lucian Mihai

Testimonials

‘The advice provided by RTPR Allen & Overy on intellectual property matters was prompt and professional, covering aspects regulated by both national and European legal framework.’

‘The colleagues are very professional, prompt in reaction and attentive to detail. Communication with them is easy and fast. Their advice is business oriented.’

‘Valentin Berea has excellent communication skills and outstanding legal competence, combined with a flexible approach to the business needs of the clients.’

Key clients

Paramount Pictures Corporation

Sony Pictures Entertainment Inc.

Twentieth Century Fox Film Corporation

Universal City Studios Productions LLLP

Walt Disney Studios Motion Pictures

Columbia Pictures

Newlyn Works Limited

Warner Bros. Entertainment Inc.

Ursus Breweries (Asahi subsidiary)

Sensiblu S.R.L. (A&D Pharma group)

British American Tobacco

Work highlights

  • Successfully representing Hollywood studios, including Paramount Pictures, Sony Pictures, and Walt Disney, in the first site-blocking case in Central and Eastern Europe, which sued internet service providers with the aim of blocking pirate movie websites.
  • Representing food and beverage company, Rio Bucovina, in an unfair advertising dispute with competitor, Carpathian Springs.
  • Acting for British American Tobacco in a potential patent infringement claim concerning an electronic cigarette.

Schoenherr si Asociatii SCA

Schoenherr si Asociatii SCA has a good track record advising clients on trade mark protection and registrations, as well as coordinating actions against counterfeit goods. The firm is notably strong in the manufacturing and consumer goods sectors. Associate Sorin-Eduard Pavel leads the team.

Practice head(s):

Sorin-Eduard Pavel

Testimonials

‘What makes Schoenherr special is the combination of professionalism together with the friendly approach towards their partners/clients, which enhances the relationship and feeling of wanting to do business together.’

Key clients

Marchesi Antinori

Work highlights

  • Represented winemaker Marchesi Antinori in trade mark litigation brought against a Romanian restaurant.

Stratulat Albulescu Attorneys at Law

Stratulat Albulescu Attorneys at Law's IP team is led by Ana Maria Kusak. The practice has good expertise in copyright, trade mark and design protection, and also advises on licensing issues. It acts for clients from a range of sectors, including retail, entertainment, IT and life sciences.

Practice head(s):

Ana Maria Kusak

Key clients

Edward Neuk Company S.R.L. (creator & developer of the Kuende social platform)

World Class Romania S.A.

Global Records S.R.L.

Rogalski Damaschin Public Relations S.R.L.

Agentia de Vise S.R.L.

Digital Broker S.R.L.

Paxdorf Design S.R.L.

La Fantana S.R.L.

Claudia Pavel – Cream

GapMinder Venture Capitals

Work highlights

  • Advising Edward Neuk Company on various IP issues related to the Kuende social platform that the company created.
  • Assisting fitness centre company World Class Romania with trade mark issues including assignments and licensing, as well as the use of copyrighted music within its clubs.
  • Acting for Romanian music label Global Records on several significant trade mark and copyright matters, including handling opposition proceedings concerning the client’s ‘Blacklist’ trade mark application.