PETOŠEVIĆ

April 2020

Eurasian Economic Union Members Sign EAEU Trademark Agreement

The Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin was signed on February 3, 2020 by all EAEU members states - Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC), expected by the end of 2020. The Agreement was first signed by the EEC in December 2018.

This significantly moves forward the process of establishing a unified EAEU IP system, under which right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices, i.e. they will be able to choose a “receiving office”. Each trademark application will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.

Apart from offering a more efficient way to obtain full protection in all member states, the unified system is also expected to offer a more affordable procedure, because the applicant will pay a single filing fee at the receiving office only. However, examination fees will still need to be paid to all national offices separately. The applicant will also be able to reduce the translation costs, because an application may be filed in Russian or in any officially recognised local language together with a Russian translation (in the event of any discrepancy, the Russian version will prevail).

By: Julia Zhevid and Tatyana Kulikova

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

New Patent Act Enters into Force in Croatia

A new Patent Act came into force in Croatia on February 20, 2020, introducing important changes. The Act was drafted in 2019 and adopted by the Croatian Parliament on January 21, 2020.

Introduction of the Utility Model Concept

The main change brought by the new Act is the introduction of the “utility model” concept to replace the previous “consensual patent”, which was often misleading because of the word “patent” contained in it. The clear distinction between the utility model and patent concepts improves legal certainty, in particular when it comes to enforcement.

The Act also limits the utility model subject matter, excluding processes, inventions in the field of biotechnology, chemical or pharmaceutical substances, and inventions the commercial use of which would be contrary to public order or morality.

The new Act introduces separate registration procedures for patents and utility models, thus significantly shortening the registration procedure for utility models – a utility model application will be published as a registered right as soon as the formal examination is completed.

Another novelty is that utility model holders cannot request civil protection on the basis of an unexamined right, and that they are allowed to file a request for substantive examination of the utility model in order to convert it into a patent, within seven years from the utility model application date, instead of ten years as was the case for consensual patents.

Introduction of Mandatory Preliminary Prior Art Search

The new Act introduces a mandatory preliminary prior art search and an optional preliminary written opinion on the patentability of an invention at an early stage of the examination procedure, before an application is published in the Official Gazette. Under the previous Patent Act, the prior art search was carried out in parallel with substantive examination. The purpose of the revision is to avoid unnecessary proceedings and costs for applicants whose applications do not meet patentability requirements and allow for more effective risk management by the rights holders.

The prior art search and written opinion on patentability is conducted by the Croatian Intellectual Property Office in cooperation with the European Patent Office (EPO), which has the capacity and the resources to conduct searches and examinations in the most complex areas of technology. This should ensure a high quality of patent protection in all areas of technology, in particular information and communication technology, nanotechnology and biotechnology, for which the Croatian IPO does not have adequate resources. The new Act should also have a positive impact on applicants such as small and medium-sized enterprises and research organizations that were often unable to register their inventions because of lengthy and costly procedures, now streamlined by the new Patent Act.

By: Ivan Kos

For more information, please contact Ivan Kos at our Croatia office.

Ukrainian Authorities Shut Down Production of Fake Shisha Tobacco

The Security Service of Ukraine has recently put an end to the production and distribution of counterfeit shisha tobacco in the city of Dnipro in central Ukraine.

The authorities raided a clandestine workshop located in a rented warehouse and seized counterfeit shisha tobacco, raw materials and equipment for its production, as well as records of related financial transactions. The raw materials were purchased in different regions of Ukraine, while the finished product was sold online and shipped to customers by mail. The seized goods and equipment are estimated to be worth approximately EUR 285,000 (USD 308,000).

Prepared by: Valentyna Martynenko

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

Source: The Security Service of Ukraine website

Ukrainian Tax Authorities Seize Counterfeit Medicines

Ukraine’s State Fiscal Service representatives in the capital of Kyiv recently seized counterfeit drugs estimated to be worth more than EUR 100,000 (USD 108,000) while raiding the storage and residence facilities belonging to a group of people involved in the illegal importation of medicines.

The counterfeit cardiovascular, hormonal and oncology medicines were illegally imported from Russia, India and Turkey. Besides the medicies, the authorities also seized computer equipment and other physical evidence during the raid.

Prepared by: Valentyna Martynenko

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

Source: Prosecutor’s Office of Kyiv website

Hungarian Officials Seize EUR 545,000 Worth of Fake Apparel, Accessories, Fabric

The Hungarian National Tax and Customs Administration (NTCA) officials recently seized more than 6,000 items of apparel and accessories and 2,500 kilograms of fabric believed to be counterfeit, infringing numerous trademarks, including Tommy Hilfiger®, Michael Kors®, Gucci®, Louis Vuitton®, Adidas®, New Balance®, Nike®, Puma® and Chanel®.

The goods, which are estimated to be worth approximately EUR 545,000 (USD 590,000), were discovered during the inspection of two trucks with Polish license plates on the M43 motorway in southern Hungary.

Prepared by: Erika Farkas

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

Source: Hungarian National Tax and Customs Administration website

Serbian Customs Seize Fake Apparel

On April 22, 2020, Serbian customs officials seized around 500 sweatpants and 200 pairs of shorts believed to infringe the Nike® trademark, as well as nearly 3,000 iron-on transfer papers featuring numerous trademarks, including Nike®, Adidas®, Converse®, Puma®, Diesel®, Gucci®, Fila® and Levi’s®. Iron-on transfer papers are commonly used to apply various trademarks onto unmarked apparel.

The goods were discovered during the inspection of a car on a highway in southern Serbia.

Prepared by: Djurdja Krivokapić

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

Source: Serbian Customs website

Legal 500 Recognizes Four PETOŠEVIĆ Offices and Nine Practitioners

The Legal 500 EMEA 2020 guide, one of the major sources listing notable law firms and practitioners from all over the world, recently recognized PETOŠEVIĆ offices and practitioners in four jurisdictions.

PETOŠEVIĆ was ranked as follows:

Bosnia and Herzegovina - Intellectual Property - Tier 1
Serbia - Intellectual Property - Tier 1
Croatia - Intellectual Property - Tier 2
Ukraine - Intellectual Property - Tier 2

PETOŠEVIĆ Bosnia Head of Office Tarik Prolaz remains in the Legal 500 EMEA Hall of Fame, while Regional Manager for the Western Balkans Mihajlo Zatezalo was included in the EMEA Leading Individuals list again.

PETOŠEVIĆ Bosnia Associate Berina Prolaz was listed as a Next Generation Partner and Rising Star, while PETOŠEVIĆ Croatia Head of Office Ivan Kos and PETOŠEVIĆ Serbia Senior Associate Ivan Matić were listed as a Next Generation Partner and a Rising Star, respectively.

Four practitioners were listed as Recommended Lawyers:

Predrag Anokić, Chief Operations Officer
Dina Petošević, Regional Manager – Russian-Speaking Region

Ana Stojanović, Attorney at Law, PETOŠEVIĆ Serbia

Mirjana Živković, Head of Office, PETOŠEVIĆ Serbia

For more information, please visit our Awards page.