TRADEMARKS

Milcev Burbea activity in the trademark area is a diversified one, as we provide a large number of services, both in prosecution and litigation aspects, which give us a global and comprehensive view for our Clients problems.

We are assisting several large companies with large portfolios of trademarks (Romaqua Group and Biofarm with over 500 trademarks or Remedica IP limited with over 100 trademarks). The activity of our office enriched this year by the taking over of the portfolio of trademarks of other important companies from the entertainment industry and software..

At the same time, the litigation practice is growing steady and firm with new cases, both for international clients (Sun Sons&Stars, YOOUX) as well as national ones (Rulmenti SA, Biofarm, Romaqua, Romega Foods Industry).

During the litigations conducted we have been faced with interesting problems related to the infringement of rights such as the blending phenomenon, the right in a band for the registration of a trademark, genuine use of marks, last collective trademark still alive in Romania, etc.

Our work in many jurisdictions worldwide (including countries such as Guyana, Suriname, South Africa, Pakistan, all North and South America, China and Australia) has diversified our views as to intellectual property and other countries approaches and thus enriched our experience, in the Clients best interest.

OUR SERVICES

We provide a full range of trademark portfolio planning services:

Availability searches on national and international databases

Advising and representing clients in filing trademark applications with the Romanian Patent and Trademark Office, European Union Intellectual Property Office (EUIPO), World Intellectual Property Office (WIPO) and worldwide

Conducting oppositions, contestations and cancellation proceedings

Administrating and renewing trademarks

Coordinating foreign filings world-wide

Performing European trademark filings and registrations before European Union Intellectual Property Office (EUIPO)

Client portfolio management and strategy against infringement

Building trademark survey mechanisms against infringes

Advising and representing clients in all the procedures related to trademark infringement, including drafting intervention petitions for the Customs Authorities

Assisting in counterfeiting and unfair competition actions

Negotiating the sale and acquisition of trademarks

Drafting and reviewing complex agreements related to trademarks, including assignment, license, franchise and distribution agreements

We provide all trademark-related commercial aspects such as labeling, packaging, consumer protection and advertising, which give us a global and comprehensive view for our Clients needs.

5000

Successful Cases

RECENT PROJECTS

Representing and assisting one major client from the software industry before both national, European and International offices for intellectual property rights with respect to the worldwide registration of its trademarks, reaching more than 200 applications and registrations. We closely collaborate with local IP attorneys all around the globe in order to overcome provisional refusal notices

Assisting one of our main clients from the beverage industry before intellectual property and trademark offices in the worldwide procedures regarding the registration of trademarks. We also manage the entire portfolio of trademarks that encompass more than 500 trademarks in a large number of countries including for example China, Canada, Kuwait, Qatar, Yemen, Saudi Arabia, UAE etc. To this end, we conduct searches, provide advice and work closely with local counsellors for the protection of the entire IP portfolio of the Client

Representing one major company from the bearing industry in the procedure of worldwide registration and protection of IP rights. In the related administrative procedures, we closely cooperate with a vast network of attorneys and counsels from the whole world. In this way, we ensure a complete tailored approach based on the client’s needs in several territories. We constantly have new fillings and act in many countries for the defence of the rights, by filling numerous oppositions

Assisting one of our clients from pharma industry in managing the entire portfolio of trademarks (encompassing about 400 trademarks) and patents of the client. We have constant filling of trademarks, search reports for new registrations, as well as numerous oppositions and appeals before EUIPO and the Romanian PTO. We provide watching services as well as comprehensive opinions as to best choice in trademark names, considering the wide and restricting pharmaceutical legal frame.

Representing one major company from the bearing industry in the negotiation and signing of various co-existence agreements and assignments not only in Romania, but also at European and international level. Recently, an important project was focused on the Asian market. Namely, we have closely worked with the clients to conclude an assignment of trademarks to one of the key players in Thailand (drafting of contract, negotiations).

Assisted the clients’ shareholders (co-owners of a trademark portfolio) with the transfer of the said trademark portfolio from one of the co-owners to another company (contract drafting, formalities for recorder in front of EUIPO and several national trademark offices).

Representing an important international retail company present in Romania since 1996 in negotiation and structuring a brand coexistence agreement.

Representing of one of the most important global bearing company in undertaking legal measures to prosecute infringers of IP rights, including enforcement of border control measures by the Customs Authorities, institution of claims and bringing lawsuits for violations in front of the Bucharest Tribunal and courts of subsequent instance, enforcement of security measures by the respective Courts.