“Outstanding market leader with specialist expertise across all areas of contentious and advisory IP. Boasts a strong international client base, with significant experience in the pharmaceutical, IT, automotive and FMCG sectors.” (Chambers and Partners, 2015)
“The lawyers are very skilled at dealing with complex IP issues, especially in front of the administrative bodies and courts […] This team has handled our cases very efficiently and smoothly, in a timely manner.” (Chambers and Partners, 2015)
“Home to a full complement of patent attorneys and lawyers, NNDKP provides end-to-end services to a wide variety of clients, many of which are major multinationals […] When it comes to prosecution, this is one of the few outfits on the market which can boast such a high degree of specialisation in chemistry.” (IAM Patent 1000, 2015)
“Acknowledged by peers as a leader in the field, Nestor Nestor Diculescu Kingston Petersen functions across the trademark spectrum. ‘They have a wealth of high-quality professionals in all areas. They are incredibly responsive and also creative.’ Intellectual property is a central pillar at the full-service outfit, whose roster of heavy-hitting brand owners grows year on year.” (WTR 1000, 2015)
“I have an excellent impression of the team’s dedication, its commercial and analytical skills, and the accuracy and precision of the lawyers.” (Chambers and Partners, 2014)
We deliver the in-depth IP knowledge more commonly associated with boutique IP firms, along with the resources and wider commercial perspective of a full service law firm.
Thus, we provide assistance in virtually all areas of practice impacting the intellectual property rights, including trademarks, designs, copyright, IP transactional, enforcement and border measures, across various industry sectors such as automotive, telecommunication, media and entertainment, gambling, pharmaceutical, software, tobacco, and food & beverages.
To do this in a prompt yet thorough manner, we assembled the largest specialized IP practice among the law firms active in Romania, to include lawyers & counselors, benefiting from the specific expertise of patent, trademark and designs attorneys. Where necessary, they act in consonance with other legal & tax professionals on transactions with an IP component or projects driven by IP aspects. Also, when the course of action prompts us with a dispute, we team-up with our Dispute Resolution Department to assemble units that provide expert advice and representation.
We believe in the anticipation and prevention of legal issues and we take a pro-active step in sharing this approach with clients and other business partners, as we provide comprehensive and practical training sessions to in-house marketing and legal departments on the full range of today’s intellectual property matters, including online related issues, at large, social media or domain names related matters. For a complete offering, our team carefully scrutinizes the legislation and case-law and provides our clients with updates on the relevant developments.
We believe that thanks to the above, our practice is top ranked by the international legal and IP publications, including Managing Intellectual Property (MIP) (being the only law firm to claim a spot in each of the areas researched in Romania; IAM Patent 1000 and WTR 1000 (top tier firm in the areas researched in Romania and the only law firm in our jurisdiction to have obtained this performance, while also having the largest number of recommended lawyers). Also, we have proudly accepted the “Romanian Intellectual Property Firm of the Year” award by MIP in 2014 and 2015.
Trademarks, designs and domain names
We built our reputation as a top intellectual property practice in Romania by translating our skills and expertise in practical, time efficient and cost-effective assistance. Today, we are entrusted with the management of large portfolio of trademarks for companies acting in vivid environments, including FMCG, technology or media and entertainment.
Our work most commonly concentrates on:
- working closely with our clients to develop trademark portfolio strategies that fit their industry sector and business goals, as well as analyzing the possibilities to mitigate the risks associated with adopting certain brands. Our assistance ranges from routine pre-filing and pre-launch trademark clearances to advising on re-branding projects for large multinationals. In every project, large or small, our goal is to help each client manage risks, protect their market share, and continue their growth
- providing a complete range of trademark and design filing and prosecution services. We manage and maintain hundreds of trademarks and designs for our clients. Through our worldwide network of IP professionals, we can meet our clients’ needs in almost every jurisdiction on earth
- representing clients in trademark oppositions and appeals before the Romanian State Office for Inventions and Trademarks and before the Office for Harmonization in the Internal Market
- helping our clients protect their brands or secure their intended use on the market through cost-effective strategies ranging from negotiating consents, coexistence agreements, letters of undertaking and trademark purchases, to sending “cease & desist” letters to infringers
- recommending and assisting brand owners to implement practical, preventive measures regarding their IP rights. We support our clients with alert trademark / design / domain name monitoring and watch services in Romania and in any other jurisdictions of interest
- being especially vigilant to identify any filings by other entities for protection of rights similar to those of our clients
- drafting agreements for the exploitation, licensing, and transfer of rights derived from trademark and design registration, as well as complete services and support in the registration of the transfer of rights
- advising and assisting clients in all aspects of domain name registration and maintenance, including representation in arbitration proceedings about domain names
- integrating our expertise and experience with that of our firm’s specialized IP litigation professionals
Thus, we have built a successful record in trademark, design and domain name related disputes.
Example of our day-to-day trademark, designs or domain name matters engagements include our assistance to a diverse client base, such as:
- a top three company doing business on the beer and cider market in Romania
- a leading multinational tobacco company
- one of the most important media networks in Romania
- an global automotive company
- one of the most important European retail companies
- one of the leading FMCG companies acting worldwide
From advertising materials, entertainment concepts to myriads of other types of art work, or from computer software to technical components, we engage in the complete range of copyright services to protect and enforce original work of authorship. We are called to:
- advise on the ownership, validity and prosecution of copyright and related rights
- negotiate and prepare agreements for the creation, use, and exploitation of copyright materials
- represent clients in their relationships with the collective management bodies
- provide infringement and anti-piracy advice
- represent clients in copyright litigation and enforcement proceedings in Romanian courts
Domestic and multinational companies, small businesses, non-profit entities, and individuals turn to us for intellectual property transactions, most of them both time and case sensitive.
We regularly engage on:
- performing extended or targeted due diligence analyses in view of upcoming transactions to be concluded by our clients
- reviewing license / assignment / business transfer / sale purchase agreements from intellectual property rights perspective
- drafting specific intellectual property clauses to be included in agreements to be concluded by our clients
- assisting with the formalities of recording the transfer of rights with the Romanian Trademark Office
Examples of our work in intellectual property transactions include:
- advising a leading company in the automotive market in restructuring its trademark portfolio through intra-group trademark assignment agreements
- advising an important local pharmaceutical company in selling its business, including its IP rights portfolio
- advising one of the most important private medical companies in selling its business, including their IP rights portfolio
- drafting and advising one of our most important clients in the medical field in obtaining a non-exclusive trademark license agreement
- assisting one of the first three companies on the Romanian beer market in drafting specific copyright assignment agreement to be concluded with various agencies and third parties with whom they are collaborating in relation to marketing communication materials created to be used on the market
- assisting one of the main actors in the retail industry in drafting copyright assignment agreements with respect to marketing communication materials
- assisting two of the main companies in the software development market with regard to drafting copyright assignment agreements to be concluded with their employees and internal collaborators
With us, clients enjoy a balanced mix of legal and technological savvy needed to pursue their business objectives regarding patents, from their creation to marketing. We refine our advice with the technical mind-set of our in-house patent-attorneys – capabilities rather distinctive among leading law firms in this market.
Our work includes:
- performing prior art searches and advising our clients on whether their new invention can be protected by patent or utility model
- assistance in all stages of drafting, filing and prosecuting patent applications before the Romanian State Office for Inventions and Trademarks, the European Patent Office and/or the World Intellectual Property Organization
- registration and enforcement of Supplementary Protection Certificates (SPCs) in the field of pharmacology
- high-quality and cost-effective national validations and translations for granted European patents, in the absence of a unitary patent system
- handling on behalf of our clients the payment of renewal fees for patents, utility models and supplementary protection certificates
- assistance in drawing up licensing and assignment agreements, providing full services towards the registration of the transfer of rights
- validity and infringement or freedom-to-operate opinions, mainly in the chemistry and pharmacology fields
- representation of clients in revocation proceedings before the Romanian State Office for Inventions and Trademarks
Together with the Dispute Resolution practice, we have a successful record of litigation work in annulment proceedings as well as in preliminary injunction and patent infringement proceedings before the Romanian Courts. Thus, we are equipped to assemble an integrated unit formed of IP professionals and litigators, who diligently asses each case assigned to us to provide comprehensive and collaborative approach to planning and litigating.
Examples of our day-to-day patent matters assistance include our advice to:
- several leading generics companies in Europe
- a global leader in the design and manufacture of embedded semiconductors for the automotive, consumer, industrial, and networking markets
- one of the world’s leading providers of online patent renewal payment service
- one of the most important dealers of printers and components of such in Romania
enforcements and border measures
Our IP team frequently helps clients combat the production, distribution, and sale of counterfeit / infringing goods. We liaise with Romanian customs authorities in our efforts to protect our clients and the Romanian market at large from international criminal traffickers in misappropriated brand identities.
We file, pursue, and enforce applications for action by the border authorities, using our domestic expertise and internationally minded – regional focus to design and recommend tailored strategies for the particular circumstances and needs of each client.
Examples of our work in enforcement and border measures include our representation of:
- a major multinational company in the motor racing industry, in relation to border seizures performed by the Romanian authorities and the enforcement of their trademark rights on the Romanian territory against infringers
- a leading EU pharmaceutical company, in lodging national applications for actions with the Romanian National Customs Authority in what regards their entire trademark portfolio protected in Romania
- one of the leading clothing retailers in Europe, in relation to border seizures in Romania and the ex-officio criminal investigations initiated by the Romanian competent authorities in such respect
- one of the leading manufacturers of auto-spare parts on the Romanian and EU market, in a criminal action initiated in what regards their activity on the market pursuant to a seizure performed by the Romanian customs authorities
- one of the leading tobacco companies, in enforcing their IP rights against infringers selling similar tobacco good and e-cigarettes via various online shops on the Romanian market