SCPA CAMPAN & TIMONEA successfully represented a well-known company providing aesthetic medical services in Romania in a dispute concerning intellectual property rights.


Background of the case

In the case at hand, the claimant alleged that it was the sole distributor and representative in Romania of a Cypriot company manufacturing medical equipment, which owned several registered trademarks. Based on the relationship between the two entities, the claimant considered that it also held the right to bring legal actions against third parties for the protection of any allegedly infringed intellectual property rights.

By means of an application for provisional measures filed by the claimant, our client, A.T.S. SRL, was summoned as defendant, the claimant seeking a provisional injunction prohibiting any acts of reproduction, distribution, public communication, or any other form of use of the trademarks allegedly owned by the claimant, until the final resolution of the action on the merits.

The legal grounds relied upon by the claimant were Article 103(1)(a) and (b) of Law no. 84/1998, Article 9 of Emergency Ordinance no. 100/2005, and Article 979 of the Romanian Civil Procedure Code.

It should be noted that, in the field of intellectual property litigation, the general legal basis for obtaining urgent measures is Article 979 of the Civil Procedure Code, which provides as follows:

“(1) If the holder of an intellectual property right or any other person exercising an intellectual property right with the consent of the holder provides credible evidence that its intellectual property rights are subject to an unlawful act, actual or imminent, and that such act risks causing irreparable harm, it may request the court to order provisional measures.
(2) The court may order, in particular:
a) the prohibition or provisional cessation of the infringement;
b) the measures necessary to ensure the preservation of evidence.”

Pursuant to paragraph (4) of the same article, this procedure is examined in accordance with the provisions governing interim relief (presidential injunction), which apply accordingly.

Therefore, for the requested measures to be ordered, several legal conditions must be cumulatively met, namely:

  • the appearance of ownership of an intellectual property right;

  • the existence of an unlawful act of infringement, actual or imminent;

  • the existence of a risk of irreparable harm;

  • the provisional nature of the measure;

  • the absence of any prejudgment of the merits of the case.


Our defence and the court’s ruling

Through the statement of defence filed, we demonstrated that the above legal conditions were not met. The court upheld our arguments and dismissed the application as inadmissible, a solution that was also upheld on appeal, which was finally dismissed as unfounded.

In this respect, the court held that the claimant was not the holder of the invoked intellectual property rights and did not possess any authorization from the actual rights holder to bring legal actions for the protection of the alleged infringed rights. Consequently, the court found that the first condition regarding the appearance of ownership of an intellectual property right was not fulfilled.

Furthermore, the court considered that the condition concerning the existence of irreparable harm was also not met, as the claimant’s arguments related to alleged acts of unfair competition, which fell outside the scope of the dispute.

With regard to the requirement of non-prejudgment of the merits, the court found that ruling on the issues raised by the claimant would amount to an anticipation of the merits of a trademark infringement action, and therefore this condition was likewise not fulfilled.

Given the failure to meet these mandatory legal conditions, the court correctly dismissed the application as inadmissible, a solution subsequently confirmed at the appellate stage by the dismissal of the claimant’s appeal as unfounded.


Conclusion

We wish to emphasize that, in matters concerning intellectual property rights—particularly within the special procedure for obtaining provisional measures—it is essential for any claimant to prove that all statutory conditions are met. Failing this, the action will be dismissed as inadmissible.

Our law firm includes a dedicated intellectual property department, and should you wish to learn more about this area of law, our specialists are at your disposal.

In a rapidly changing world, having the right legal partner makes a vital difference. The SCPA Campan & Timonea team is always ready to provide the best solutions for legal matters of any kind. We invite you to visit https://ct-lawyers.ro/contact/ or send an email to office@ct-lawyers.ro to schedule a meeting.