PETOŠEVIĆ

March 2020

Kazakhstan Limits Administrative Actions IPR Owners Can Take Against Small Businesses

On December 26, 2019, the President of Kazakhstan signed a Decree No. 229 limiting administrative actions that IPR owners can take against small businesses suspected of IPR infringement. As a result, the suspension of police actions such as raids of premises suspected of storing counterfeit goods took effect on January 1, 2020 and will continue until January 1, 2023.

The Kazakh government explained that the measures are designed to support small local enterprises. However, the change has a negative impact for trademark owners, because raids were the main tools used in securing evidence against counterfeiters.

The inspections can still be conducted under certain circumstances, but all inspections related to intellectual property rights, specifically trademark rights infringement, have been completely banned.

Many local infringers involved in counterfeiting activities correspond to the requirements of a small business entity (e.g. the average annual number of employees does not exceed 100 people) and even if they do not – it may be expected that medium-size infringers might re-organize the business so that it consists of several small business entities instead of one medium entity.

The administrative actions are still possible against medium and big business entities, and also against individuals that did not officially register the entities.

It is also possible to initiate cases under the Criminal Code, but thresholds based on numbers and values of infringing goods must be met. 

After the roundtable organized by a local IP firm, a letter has been sent to the President’s Administration, asking to include trademark infringement cases into the list of exceptions, so the raids will be allowed. However, up until now the government has not responded.

For more information, please contact Mayya Pak at our Russia office.

UPC Future Uncertain Amid News from Germany and UK

On March 20, 2020, the German Federal Constitutional Court issued a long-awaited decision upholding the German patent attorney Dr. Ingve Stjerna’s complaint against Germany’s ratification of the Unified Patent Court Agreement (UPCA) claiming that the ratification would be unconstitutional.

In June 2017, the German Federal Constitutional Court asked the German president not to sign the legislation implementing the Unified Patent Court (UPC) and unitary patent because of the German attorney’s complaint. After nearly three years, the court finally issued a decision stating that the German act by which it was to accede to the UPCA violated the German populace’s constitutional rights, because it was not passed with the parliamentary majority required by the German legislation.

Although this decision represents a considerable setback for the implementation of the UPC, it could be overcome by a two-thirds majority vote in the parliament. In a press release issued on March 26, Germany’s Minister of Justice and Consumer Protection Christine Lambrecht said that she will work to ensure that the UPC project moves forward.

Moreover, on February 27, 2020, the United Kingdom published a document setting out its negotiation objectives and approach to its future relationship with the EU. The UK announced that the country would not agree to any obligations to align its laws with the EU’s, or for the EU’s institutions, including the Court of Justice of the European Union (CJEU). Because the UPCA requires UPC participating states to respect the jurisdiction of the CJEU and the primary of EU law, it has become clear that the UK will not seek to participate in the UPC system, despite previous hopes to the contrary even after the Brexit vote.

The UPCA was signed in Brussels on February 19, 2013. The UPC is intended to be a court common to the contracting states and thus part of their judicial system, with exclusive competence with regard to European patents and patents with unitary effect.

Initially, the UPCA was to enter into force on the first day of the fourth month after France, Germany, the UK and at least 10 other EU member states have deposited their instrument of ratification with the EU Council. While France ratified the Agreement back in 2014, the recent news from Germany and the UK further delay and bring uncertainty to the implementation of the UPCA.

By: Nada Herak

For more information, please contact Nada Herak at our Serbia office.

Cake Wars in Ukraine: Confectioner Roshen Sues Ice Cream Maker Khladoprom over “Kyiv Cake” Trademark

In November 2019, the leading Ukrainian confectionery corporation Roshen asked the Kyiv City Commercial Court to order the Ministry for Development of Economy, Trade, and Agriculture to cancel the trademark registration “Khreshchatyk Kyivsky tort” belonging to the Ukrainian ice cream manufacturer Khladoprom, on the basis of its similarity with Roshen’s trademark “Kyivsky tort” (Kyiv cake).

Roshen also asked the court to order Khladoprom to withdraw from the market and destroy all packaging and labels featuring the words “Kyivsky tort”, independently or in combination with other word and figurative elements, particularly chestnuts or chestnut leaves.

The Kyiv City Commercial Court ruled in favor of Roshen in December 2019, but Khladoprom appealed this decision in January 2020. The case is currently pending before the Northern Commercial Court of Appeal.

“Kyiv cake” is a well-known dessert made since 1956 at the Kyiv Confectionery Factory, now part of the Roshen corporation. The cake packaging features images of horse chestnut leaves, one of the symbols of the Ukrainian capital.

Roshen has previously succeeded in defending its rights in unfair competition proceedings against several other manufacturers, including the Kyiv-based BKK and Kyivchlib baking and confectionery companies. The proceedings against both companies took place from 2016-2019 and centered around the similiarity of the “Kazkovy klyuchyk” (“Fairytale Key”) cake packaging to Roshen’s earlier “Zoloty klyuchyk” (“Golden Key”) trademark and packaging design. “Golden Key” is another one of Roshen’s famous cakes.

Moreover, Roshen is trying to assert its right to the color red as a trademark for goods in classes 22 and 30 in Ukraine. Back in 2018, Roshen filed a lawsuit against the Ministry for Development of Economy, Trade and Agriculture because it had refused to register the trademark. The Kyiv City Commercial Court issued a judgement in favor of Roshen in June 2019, but the Ministry appealed the decision in July 2019. The case is still pending before the Northern Commercial Court of Appeal.

Prepared by: Yuriy Karlash and Valentyna Martynenko

For more information, please contact ukraine@petosevic.com.

Coronavirus-Related Applications Reported by Several Countries

As the current coronavirus (COVID-19) pandemic has become a health emergency of international concern, numerous domain names and trademark applications related to the disease have reportedly been filed in recent weeks in several countries.

Domain Names

According to DNS Belgium, the registry which manages the .BE, .VLAANDEREN and .BRUSSELS domain names, the COVID.BE domain name is no longer available, because the application for it was filed by a French resident on February 12, 2020. As a reminder, the first COVID-19 case in Europe was confirmed in France on January 24, 2020.

The domain name CORONAVIRUS.BE was registered on January 20, 2020 by the Dutch domain name management company Mijndomein, while CORONAVIRUS.VLAANDEREN was filed in Belgium, apparently by a private individual.

Trademarks

In the Benelux, Belgian company Whatifolution filed a trademark application for COVID MASK on February 27, 2020 in classes 9 and 10 for, inter alia, "oral masks against deadly viruses" and "protective masks against bacteria" whether in a medical environment or for private individuals "who could be in contact with infected people." This application was first published for opposition, but was later refused, according to its status in the Benelux IPO database.

Following this trademark filing, on March 11, 2020 the Benelux IPO published an official notification on its website, discouraging further coronavirus-related applications by stating that it is obliged to refuse most of these applications because such trademarks are descriptive in nature and contrary to public order or morality.

Even though the message published by the Benelux IPO was quite clear, a Belgian resident filed an application for the mark I WILL SURVIVE COVID-19 on March 20, 2020, for goods in class 16 - printed images, printed logos, graphic reproductions, color prints and paper emblems. The application is pending.

Outside the Benelux, in February 2020 an application for CORONAVIRUS was filed in Italy. The USPTO has also received quite a few similar applications in recent weeks, among them for CORONAVIRUS and CORONAVIRUS SURVIVOR GUIDE – the first one was filed for the name of a musical band and the second one for "publications relating to survival, protection, medicine and pandemics".

Prepared by: Anamarija Stančić Petrović

For more information, please contact Anamarija Stančić Petrović, our representative in Brussels.

Hungarian Officials Seize Fake Apparel

The Hungarian National Tax and Customs Administration (NTCA) officials recently seized more than 8,800 clothing items infringing several trademarks including Louis Vuitton® and Zara®.

The goods, estimated to be worth approximately EUR 500,000 (USD 537,000), were discovered at a checkpoint on the M5 motorway in central Hungary during the inspection of a truck travelling from Turkey to Poland.

Prepared by: Erika Farkas

For more information, please contact hungary@petosevic.com.

Romanian Customs Seize Fake Sneakers

On February 21, 2020, the Romanian customs officials at the port of Constanta in eastern Romania seized more than 1,000 pairs of sneakers believed to infringe Nike’s Air Max® trademark.

The goods, estimated to be worth approximately EUR 104,000 (USD 112,000) were discovered during the inspection of a container arriving from China.

Prepared by: Bogdan Neagoe

For more information, please contact romania@petosevic.com.

Serbian Customs Seize Fake Perfume, Apparel, Accessories

Serbian customs officials recently seized a considerable amount of perfume, apparel and footwear believed to be counterfeit.

On February 27, 2020, the customs officials at the Vrška Čuka border crossing point with Bulgaria seized around 250 watches, 100 bottles of perfume and over 2,000 items of apparel, footwear and accessories believed to infringe numerous trademarks, including Casio®, Armani®, Guess®, Chanel®, Rolex®, Swarovski®, Carolina Herrera®, Dior®, Bulgari®, Roberto Cavalli®, Kenzo®, Adidas®, Nike®, Levi’s®, Philipp Plein® and Boss®. The goods were discovered in a truck heading to Bosnia and Herzegovina.

On March 6, 2020, the officials at the Gradina border crossing point with Bulgaria seized around 90 bottles of perfume also believed to infringe various trademarks, including Armani®, Versace®, Paco Rabanne®, Chanel® and Carolina Herrera®. The perfumes were discovered in a truck arriving from Turkey.

Prepared by: Djurdja Krivokapić

For more information, please contact serbia@petosevic.com.

Chambers & Partners Guide Recognizes PETOŠEVIĆ in Five Jurisdictions

The 2020 Chambers & Partners Guide for Europe, one of the top publications on legal industry rankings, recently recognized PETOŠEVIĆ offices and practitioners in five jurisdictions.

PETOŠEVIĆ was ranked as follows:

Croatia — Intellectual Property — Band 2
Montenegro — Corporate/Commercial — Band 3

North Macedonia — Intellectual Property — Band 2
Serbia — Intellectual Property — Band 1
Ukraine — Intellectual Property — Recognized Practitioner

Regional Manager for Western Balkans Mihajlo Zatezalo was recognized as an Eminent Practitioner in Serbia.

For more information and to read testimonials about PETOŠEVIĆ and our team, please visit our Awards page.

PETOŠEVIĆ Professionals Re-Elected EPI Council Members

PETOŠEVIĆ Regional Manager for the Western Balkans Mihajlo Zatezalo, PETOŠEVIĆ Albania Head of Office Vladimir Nika and PETOŠEVIĆ Group Executive Chairman and CEO Slobodan Petošević were recently elected as members of the 19th Council of the European Patent Institute (EPI) for the term 2020-2023.

Additionally, five PETOŠEVIĆ practitioners are EPI committee members for the term 2020-2023:

• Nada Herak – Serbia – European Patent Practice Committee
• Melina Nika – Albania – Disciplinary Committee
• Vladimir Nika – Albania – European Patent Practice Committee
• Slobodan Petošević – Serbia – Professional Conduct Committee
• Mihajlo Zatezalo – Serbia – Litigation Committee

EPI, also called the Institute of Professional Representatives before the European Patent Office, is the professional body representing all registered European Patent Attorneys and currently has about 12,300 members from each of the 38 European Patent Convention contracting states. The EPI’s governing body is the Council, which is elected once every three years. All Council members do their council work voluntarily.

Mihajlo Zatezalo Contributes Serbia Chapter to EPO Patent Enforcement in Europe Guide

PETOŠEVIĆ Regional Manager for the Western Balkans Mihajlo Zatezalo recently contributed the chapter on Serbia to the “Patent Enforcement in Europe” guide published by the European Patent Office (EPO).

“Patent Enforcement in Europe” is a compilation of country profiles which provides a comprehensive insight into national enforcement practices and procedures in the European Patent Convention (EPC) contracting states.

For more information, please contact Mihajlo Zatezalo at our Serbia office.