PETOŠEVIĆ

July 2020

Romania: New Trademark Law Brings Important Changes

A new trademark law entered into force in Romania on July 13, 2020. It transposes into national legislation Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the EU member states relating to trademarks. The most important changes are explained below.

Elimination of Graphical Representation Requirement

The graphical representation requirement no longer applies when submitting a trademark application, meaning that a sign can be represented in any form that distinguishes the goods or services applied for from those of other undertakings and enables the authorities to clearly establish the scope of protection that is sought.

Literal Interpretation of Class Headings

The law adopts the literal approach when interpreting the scope of protection. This applies when class headings are used in lists of goods and services in trademark applications and registrations. The owners of existing registrations using class headings will have the option of clarifying the scope by filing, before September 30, 2020, a declaration in which they will specify the list of goods or services intended to be covered.

Absolute Grounds for Refusal or Invalidity

The law extends the absolute grounds for trademark refusal or invalidity by adding the words “or another characteristic” to the relevant article in the law, meaning that now the restrictions apply not only to shape signs but to other types of signs as well. Namely, according to the law, signs can be refused if they consist exclusively of the shape, or “another characteristic”, which (i) results from the nature of the goods themselves, (ii) is necessary to obtain a technical result, or (iii) gives substantial value to the goods.

The law also introduced an additional absolute ground for refusal – a sign cannot be registered if there is a conflict with an existing designation of origin, geographical indication, traditional term for wine, traditional speciality guarantee or a plant variety.

New Examination Procedure

Once the PTO examines an application on absolute grounds, any person can file an observation based on absolute grounds within two months from the application’s publication date. Once the PTO examines the application on its merits and issues a grant decision, oppositions based on relative grounds may be filed within two months from the publication date of the grant decision.

Opposition proceedings may be suspended for two months to allow the parties to settle the dispute amicably (cooling-off). This period may be extended by a maximum of three additional months. If the parties do not reach a negotiated settlement by the end of the cooling-off period, the opponent can supplement his opposition with further arguments or evidence within 30 days. The applicant is then allowed to respond within 30 days from receiving the opponent’s arguments and/or evidence.

Previously, oppositions could be filed within two months from the application’s publication date, and the previous law did not contain any provisions regarding the cooling-off period.

Grounds for Appeal

According to the previous law, interested parties who missed the deadline for filing an opposition could file an appeal against the registration of a later trademark, on relative grounds, within 30 days from the registration’s publication date. This is no longer possible under the new law.

Shorter Deadlines

The deadline for filing a response to a provisional refusal was shortened from three months (with the possibility of a three-month extension) to only one month (with the possibility of a one-month extension), while the deadline for filing a disclaimer at the PTO’s request was shortened from two months to 30 days. The deadline to remedy the deficiencies in an application is now 30 days instead of three months. Finally, the deadline for filing documents in support of a priority claim is 30 days instead of three months.

Trademark Infringement

The law broadens the concept of trademark infringement by establishing additional uses of similar or identical signs that may be prohibited by trademark owners, namely:

• Use of a sign as a company name or as part of a company name (however, the law does not clarify, like Directive (EU) 2015/2436 does, that in order to be prohibited, such use has to be made for the purposes of distinguishing goods or services);
• Use of a sign in comparative advertising in a way contrary to the provisions of the Misleading and Comparative Advertising Act No. 158/2008; and
• Use of a sign on packaging, labels, tags, security or authenticity features or devices, and placing these on the market.

Revocation and Declaration of Invalidity

Starting from January 14, 2023, the Romanian PTO will be entitled to handle applications for revocation and declaration of invalidity (now handled by the Bucharest Court). The plaintiff will be able to choose whether to bring an action before the Romanian PTO or the Bucharest Court. Until then, revocation and invalidation actions will continue to be handled only by the court.

The new law was adopted following the European Commission’s July 2, 2020 decision to refer Romania to the Court of Justice of the EU for failing to communicate its transposition measures of the Directive (EU) 2015/2436.

Amendments to the Implementing Regulations of the Trademark Law are expected to be published by September 13, 2020.

By: Aura Campeanu and George Irimescu

For more information, please contact Aura Campeanu or George Irimescu at our Romania office.

Ukraine Adopts Bylaws Implemening Customs Code Amendments

In order to implement the recent amendments to Ukraine’s Customs Code related to customs enforcement of intellectual property rights, the Ukrainian Ministry of Finance adopted two Orders, No. 281 and No. 282, which entered into force on June 30, 2020.

The Customs Code amendments and the subsequent bylaws were modeled after the Regulation (EU) No. 608/2013, which is another step towards fulfilling Ukraine’s obligations under the EU-Ukraine Association Agreement and the WTO Trade Facilitation Agreement.

The Order No. 281, regulating how customs authorities handle goods suspected of infringing IP rights and how they interact with rights holders, provides for the following procedures:

Customs Clearance Suspension Based on Customs Register Data

In order to identify goods suspected of infringing IP rights, the customs authorities compare the information about the products undergoing clearance with the information about original and counterfeit goods available in the Customs Register. Because customs enforcement of IP rights will not work when it comes to to genuine goods, it is important for rights holders to provide complete, relevant and reliable information when filing customs watch applications (CWAs), to enable the customs authorities to distinguish the authentic from counterfeit goods.

Customs Clearance Suspension upon Customs Authorities’ Initiative

The Ukrainian customs authorities can act on an ex officio basis should they suspect IPR infringement, which is now the only ground for the suspension of customs clearance of goods that are not covered by a valid CWA and recorded in the Customs Register. There were previously several grounds on which the customs officials could suspend goods on their own initiative.

If there is a suspicion of IPR infringement, customs clearance may be suspended provided that:

a) The customs authorities are able to identify the rights holder;

b) There is a valid registration for the corresponding IP right or a copyright certificate;

c) The suspect goods are not perishable.

Destruction of Small Consignments

A procedure for the detention and destruction of small consignments similar to the one outlined in the Regulation (EU) No. 608/2013 has been introduced. If the customs authorities suspect that certain goods infringe IP rights, they inform the declarant or the owner of the goods about their intention to destroy the goods. If the declarant or the owner do not file an objection against the destruction, the goods are destroyed under customs supervision. If the declarant or the owner do object, the rights holder is given an opportunity to initiate proceedings to protect their IP rights. If the customs authorities do not receive a confirmation from the rights holder that legal proceedings have been initiated before the expiration of the relevant deadline, the suspended goods must be released and are subject to completion of all other customs formalities.

Removing Labels from Goods and Packaging

Following the rights holder's consent or request, the customs authorities are allowed to remove the marks and labels from the detained goods and their packaging in order to eliminate the traces of IP rights infringement. The costs associated with this procedure are borne by the rights holder.

Bearing Storage Costs

The goods that are suspended based on the data from the Customs Register or on the customs authorities’ initiative are to be stored at the customs warehouse provided that the IP rights holder has confirmed that the goods are infringing. The costs associated with this procedure are borne by the rights holder, who may request a cost estimate when responding to a customs detention notification. The customs authorities must provide a cost calculation to the rights holder and the declarant/owner of the goods.

The Order No. 282 regulates a new procedure for recording IP rights in the Customs Register for purposes of customs surveillance.

Electronic Submissions

The Order provides for the creation of an online Customs Register of Intellectual Property Rights, which is to be launched in the foreseeable future and which will eventually enable electronic communication between the customs authorities and the rights holders. Particularly, it will enable the e-filing of CWAs, online amendments of registered CWAs, online responses to customs notifications and requests, and similar activities.

New Application Forms

The CWA and the Renewal Application forms were modified based on those used in the EU countries. It is now possible to apply for the registration of multiple IP rights with one CWA, while one CWA could previously cover only one IP right.

IP rights that are already recorded in the Customs Register should be renewed before the renewal deadline by submitting a new CWA that conforms to new standards.

Required Information

The scope of information required in the CWA has been extended in order to enable the customs authorities to identify genuine and counterfeit goods without rights holders’ involvement.

Time Frames

The customs authorities have 30 working days from the receipt of a CWA to either register an IP right or to refuse registration.

Applicants are provided a 10–day period to respond to office actions issued during the consideration of their CWA.

The renewal request must be filed at least 30 working days before the expiration date. This term was previously 10 working days before the expiration date.

Grounds for Refusal to Register or Renew a CWA

A CWA registration or renewal may be refused on the following grounds:

• Lack of a valid IP right registration in Ukraine when submitting a CWA;
• Failure to fill in the required information in customs application forms;
• Nonconformity of the goods listed in the CWA with those covered by the trademark registration;
• Insufficiently detailed description of the original goods to enable the customs authorities to recognize them;
• Submitting inaccurate or insufficient information and/or false documents;
• Failure to cover the costs associated with the storage of goods in the customs warehouse.

Removal of a CWA from the Customs Register

A CWA may be removed from the Customs Register on the following grounds:

• Upon a rights holder’s request;
• Upon a court order;
• If an IP right has been cancelled or its legal protection has lapsed;
• Partial or full assignment of an IP right;
• Termination of an IP right in the Customs Register;
• Inclusion of inadequate or false information in a customs application;
• Systematic (three or more times) lack of updates of the information in the Customs Register relating to any changes to the IP right registration, or of the information enabling the customs authorities to analyze and assess the risk of IP right infringement;
• Failing to cover the costs associated with the storage of goods in the customs warehouse;
• Systematic (three or more times) lack of filing a response to customs notifications relating to detentions;
• Rights holder’s use of information received from the customs authorities for purposes not related to border control.

By: Tatiana Panchenko

For more information, please contact Tatiana Panchenko at our Ukraine office.

Russia Elaborates Procedure for Informal Observations Regarding Company and Trade Names

The possibility of tackling a newly filed application in Russia has been and still remains the subject of many queries as there is no proper opposition procedure available before the Russian IPO against pending trademark applications. IP practitioners have always been advised to challenge pending applications with informal observations, which are not binding, but nevertheless often serve the purpose of impeding undesirable filings.

With a recent memorandum of the Russian IPO dated June 10, 2020, informal observations have become slightly more formalized if the newly filed trademark is similar to an existing company name or trade name. While Russian trademark legislation provides for challenging a trademark on the grounds of similarity with a prior company name, IPO examiners have never paid much attention to this provision. Also, the Russian IPO does not conduct searches for conflicting company and trade names during the examination process. The recent memorandum now elaborates the means of challenging a pending trademark application under the existing provisions.

Unlike invalidation actions, which can only be lodged by interested parties before the IPO’s Chamber of Patent Disputes (CPD), the memorandum explicitly states that informal observations can be filed by any person. The observations must be filed during the conflicting application’s examination, i.e. before the examiner reaches a final decision.

The principles of determining the similarity of a company name to a trademark are the same as those which generally apply during the trademark examination process. Only the distinctive part of the company name will be taken into account, and all other indications, such as a “limited liability company”, will be disregarded.

As provided by Articles 2 and 8 of the Paris Convention, “nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals”. This means that both Russian and foreign companies will have the right to challenge trademark applications if the trademarks are similar to their company names in Russia – according to Article 8 of the Paris Convention, “a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”.

It is important for the company name to have been registered before the priority date of the challenged application, which must be proven by a company certificate, company register extract, or another relevant document, depending on the company’s jurisdiction. The company must also legally exist on the observation filing date.

The company name must be used in Russia in connection with a business activity similar to the goods or services listed in the conflicting trademark application. The nominal or putative use of a company name will not be considered as a reason to cite the company name as an obstacle to registering a trademark.

The rights holder must provide evidence of the company’s relevant activities in Russia. However, this may not be needed in case the company name is known worldwide, which must be proven.

The same conditions apply to trade names that are not subject to registration but are used to individualize businesses and may also be represented graphically or as combined designations.

Observations however remain informal – the memorandum stipulates that the examiner is not bound by the information provided in the observation and will not request additional documents if the observation is not convincing or if it lacks evidence. The examiner is even free to leave the observation unanswered - however this rarely happens.

Informal observations are becoming an attractive option when challenging pending trademarks, particularly compared to invalidation actions filed before the CPD, which tend to support examiners’ decisions and thus make it difficult to successfully challenge registered trademarks. IPO examiners in charge of applications often appear more flexible, which increases the probability of successfully challenging a trademark application during the examination process.

By: Pavel Seleznev

For more information, please contact Pavel Seleznev at our Russia office.

Russian Trademark FAQ: 2020 Cheat Sheet

PETOŠEVIĆ Russia team member, Trademark Attorney Pavel Seleznev compiled a list of the most frequently asked questions regarding trademark protection in Russia, and completed it with a set of concise and useful answers covering everything from the registration process to appeals and invalidations.

Are trademarks protected in Russia by use or by registration, and how do I get my marks protected?

Trademark protection is obtained through a registration procedure. The use of the trademark in trade is not a prerequisite for its registration. Russia is a first-to-register jurisdiction. There is no requirement of “intent to use”, like in the US.

What can be registered as a trademark?

Almost any distinctive sign can be registered, including words, images, colors, 3D shapes, sounds, scents and any distinctive combinations thereof.

Are multi-class applications allowed?

Yes, a trademark may hypothetically be filed in respect of all 45 classes of the Nice Classification of goods and services.

Is joint ownership of trademarks possible?

Joint ownership is unfortunately not available in Russia. There are only two ways to establish the joint ownership and each has its pros and cons:

1. Joint ownership of a collective mark

Russian trademark legislation allows for the conversion of a trademark into a collective mark at any time throughout its validity term. A collective mark may be owned by an established association of producers of goods and the holder of the original trademark must be a member of this association. The association must elaborate the collective mark bylaws specifying the list of enterprises entitled to use the mark, the purpose of trademark’s registration, list of goods and services covered, a description of common characteristics in terms of quality, conditions of trademark use, the methods to control this use, a description of conformity to the rules, and the sanctions for violation of these rules. The bylaws must be filed with the IPO, which then considers the application for conversion of the trademark into a collective mark.

Owning a collective trademark has its downsides and in fact may be regarded as quite burdensome. First, a collective mark cannot be assigned or licensed to a third party. Next, the owner association cannot grant consent for the registration of similar marks by third parties. Finally, any amendments to the bylaws must be recorded with the IPO.

2. Joint ownership of a legal entity

This may be a more attractive option and it offers more freedom in terms of the disposal of trademark rights. In this case, the intended co-owners form a third entity in any jurisdiction in the world (some restrictions may apply), together as shareholders or partners of another kind, and assign the trademark to this entity. This allows the co-owners to evenly spread the shares as they like in any proportion. Furthermore, because the trademark remains a regular mark, it can be assigned or licensed – any kind of disposal is possible.

Is a trademark search necessary?

It is advisable to conduct a trademark search to learn about the possible obstacles to the registration in terms of third parties’ prior rights.

How does the registration procedure work?

A trademark application passes a two-stage examination. Once the application materials and the paid examination fee amounts are approved during the formal examination, the substantive examination is conducted, including the search of prior registered trademarks and prior applications. It usually takes 6-7 months to obtain a grant decision.

What kind of a Power of Attorney is needed for trademark prosecution?

A simply signed form will suffice. Actually, the IPO does not request the submission of a Power of Attorney along with the application, but it may be requested in the course of the examination. Responding to office actions relating to international trademarks, informal observations against third party’s marks, as well as recordations and any sort of appeals always require a simply signed PoA.

EXAMINATION

What is the difference between the absolute and relative grounds for refusal to register a trademark?

Absolute grounds for refusal relate to the essence of the mark and general legal framework for trademarks in Russia, while the relative grounds relate to the potentially conflicting prior exclusive rights of other parties.

I have received a watch notice and would like to oppose a third party’s application. Is it possible?

The Russian IPO publishes new applications for information purposes only and not for opposition purposes, but this does not mean that opposing a new trademark application is impossible. There is the option of addressing the examiner in charge with a letter informing them of a possible conflict and filing a subsequent invalidation action. These letters are known as “informal observations”. Even though the examiner is not bound by them, they often serve the purpose of impeding undesired marks.

I have received a provisional refusal from the Russian IPO – what should I do?

The response to an office action or a provisional refusal must be filed within six months from the date the document was issued. The failure to submit a response will result in the final decision on the application taken without considering the applicant’s opinion. The response to an office action or a provisional refusal can only be filed through a licensed Russian trademark attorney.

I have received a provisional refusal requesting a disclaimer which I do not mind. Do I have to respond to it?

It is possible to leave this provisional refusal unanswered. The ex-officio disclaimer will follow after six months and the mark will be protected as a whole, with the disclaimer indicated. However, to expedite the procedure it is useful to file a response. In this case the final decision will be issued within 30-45 days from filing the response.

Does the Russian IPO accept letters of consent from the owners of prior registered similar marks?

Consent letters are accepted in general, however the examiner is not bound by them and the final decision is still at his/her discretion. Consent letters are not accepted in respect of identical marks and collective marks.

I have filed a word mark in standard characters and the IPO has cited a prior registered combined mark containing the same word. Can this citation be overcome by arguments of dissimilarity?

The Russian IPO considers word elements of combined marks as dominant, because they form the essence of the mark’s distinctiveness, so if the word elements coincide or if the degree of their similarity is relatively high, the newly filed mark will most likely be rejected. However, there is no uniform rule and it is possible to argue dissimilarity.

Can a personal name be registered as a trademark?

Personal names can be registered as trademarks unless they contain the names of famous persons or characters. In such cases the IPO may request a permission from that person or their lawful heirs, or from a copyright holder in the case of a famous character.

I have registered my trademark in many countries – can this be an argument to overcome citations in Russia?

The Russian IPO will not accept multiple registrations in other countries as an argument for the mark’s registrability in case of existing prior rights of others. The same applies to descriptive or otherwise unregistrable marks – the local rules will always prevail.

APPEALS and INVALIDATIONS

Can I file an appeal to the examiner’s decision to reject my application?

It is possible to appeal the examiner’s decision with the Chamber of Patent Disputes (CPD) of the Russian IPO within four months from the date the decision was issued.

I don’t have a registered trademark in Russia, but I became aware that someone registered the same mark. Are there any options to oppose it?

Russian legislation provides for invalidation of bad-faith registrations.

It is also possible to oppose a trademark that was obtained in the name of the trademark holder’s agent in one of the Paris Convention member states.

I own a registered trademark in Russia and would like to oppose a similar newly registered third party’s mark. What should I do?

The Russian law allows for an invalidation procedure before the CPD within the first five years from the conflicting trademark’s publication date in case of relative grounds, and at any time throughout its validity term in case of absolute grounds. Invalidation is also possible on unfair competition grounds – these cases can be brought before the specialized IP Court or the Federal Antimonopoly Service at any time throughout the contested mark’s validity term.

NON-USE OF MARKS

Can a trademark be cancelled for non-use?

There is a three-year grace period for the owner of a trademark to begin its use in Russia. Failure to do so would allow “interested parties” to challenge the mark for non-use. The procedure involves a two-month mandatory cooling-off period that must be initiated by the potential plaintiff by sending a warning pre-trial letter to the trademark owner. After this, a cancellation action can be filed with the IP court.

How do I prove that someone has not used their mark for three years?

The burden of proof is on the owner of the contested mark. The plaintiff does not have to produce any proof of non-use.

How do I qualify as an “interested party” in a non-use case?

Proving the legitimate interest of the plaintiff in a non-use cancellation action is a substantial part of the proceedings, and the adverse party may try to disqualify the plaintiff on the lack of interest grounds (lack of standing). Running a business in respect of similar goods and services as well as having filed an application for a similar trademark almost always fit the requirements for an “interested party”.

Will the contested mark be cancelled partially or in whole in case no proof of use is produced?

The mark can be cancelled partially (or in whole), depending on the goods and services of the plaintiff’s interest, as well as in respect of similar goods and services.

Can a non-use cancellation result in a boomerang bad faith claim?

The plaintiff must qualify as an “interested party”, so this automatically disallows any bad faith claims.

RECORDATIONS

I have moved to a new address. Do I have to record a change of address?

Under Russian legislation, trademark owners are obliged to record changes of name and/or address, but it is not specified when exactly this needs to be done.

The recordation of a change of name or address will require the documents that can prove this change. It is easier for trademark holders from Singapore Treaty member states – only a fresh Power of Attorney is needed.

I’ve had enough, I now want to sell my trademarks and forget all that! Do I have to register the transfer of rights?

Any disposal of exclusive rights, be it assignment, license or franchise, must be registered with the IPO and comes into effect only upon registration. Therefore, the answer is yes – contact your Russian attorney to find out which documents will be needed in your particular case, and only then book your tickets and fly to your paradise island.

For more information, please contact Pavel Seleznev at our Russia office.

Uzbekistan Approves Legal Requirement to Prescribe Medicines Using International Nonproprietary Names

On July 1, 2020, an order of the Uzbek Minister of Health approved a new regulation requiring medical organizations to prescribe medicines using international nonproprietary names (INNs).

This requirement does not apply to persons entitled to preferential outpatient treatment or to prescriptions of medicines containing psychotropic, narcotic and toxic substances, their analogs, or precursors.

A new mandatory prescription procedure is currently being introduced in all medical institutions, regardless of their form of ownership. In the prescription, the international nonproprietary name of the medicine and its composition must be written in Latin, while the physician’s instructions regarding the method of use must be written in Uzbek or Russian.

It is forbidden for doctors to issue medical prescriptions if the patient has no medical indications. The following may also not be prescribed:

• Drugs which have not passed state registration in Uzbekistan (with the exception of orphan drugs);
• Medicinal products intended for use only in medical institutions, including drugs used as anesthetics.

The new regulation provides for a blank prescription form and specifies the procedure, including the main abbreviations to be used when writing prescriptions. Prescriptions that are not prepared in accordance with the requirements will be deemed invalid.

By: Gulnoza Abdurakhmonova

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

Kazakhstan Amends Digital Technology Regulations

On July 5, 2020, a law introducing amendments to Kazakh digital technology regulations entered into force, amending 35 legislative acts, including the Law on Informatization, which underwent the most significant changes, related to the use of digital innovations in the field of public services and in various sectors of the economy.

The amended Law on Informatization requires all websites registered under the .KZ and .ҚАЗ country-code top-level domain (ccTLD) to obtain a Secure Sockets Layer (SSL) certificate, which provides website authentication and enables an encrypted connection. SSL certificates confirm that the website host has demonstrated ownership over the domain to the certificate authority at the time of certificate issuance. SSL certificates may be issued by any web hosting provider either for free or for a fee. Using SSL certificates for .KZ and .ҚАЗ domain names was previously voluntary.  

Additionally, according to the amended law, websites with domain names registered under the .KZ and .ҚАЗ ccTLD must be hosted on hardware and software systems located on the territory of Kazakhstan.

The amended Law on Informatization now also includes definitions for numerous new terms, including “blockchain”, “distributed data platform”, “data analytics”, “intelligent robot”, “space of the Kazakhstan segment of the Internet“, “digital asset”, “digital documents service”, “digital mining”, “digital token” and “electronics industry”.

There are 13 accredited domain name registrars in Kazakhstan authorized to register .KZ and .ҚАЗ domain names and provide web hosting services. There are approximately 140,000 domain names currently registered under the .KZ and .ҚАЗ ccTLD.

Prepared by: Dayana Auezova

For more information, please contact dayana.auezova@petosevic.com.

Russia Introduces Electronic Registration Certificates and Letters Patent

On July 15, 2020, the Russian Parliament approved a law according to which all IP rights applicants will first receive certificates of registration and letters patent in electronic form. Paper copies will be available only upon a separate request.

The law was published on July 20, 2020 and will enter into force on January 17, 2021.

Prepared by: Tatyana Kulikova

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

EU Loses EUR 83 Billion Each Year in Sales Due to Counterfeiting

The European Union Intellectual Property Office (EUIPO) recently published the 2020 Status Report on IPR Infringement that examines the economic impact of counterfeiting and piracy. The study was carried out through the European Observatory on the Infringement of Intellectual Property Rights.

According to the study, the annual losses due to counterfeiting and piracy in the EU are estimated at EUR 83 billion (USD 97.4 billion), while the lost tax revenue is estimated at EUR 15 billion (USD 17.6 billion). The report also estimates that over 400,000 jobs are lost due to counterfeiting in the EU.

The report also analyzes global customs seizures and identifies trade routes in fake goods including the top provenance economies of fake goods entering the EU – China, Hong Kong, India, Malaysia, Morocco, Turkey and the United Arab Emirates. Distinguishing between provenance economies that produce counterfeits and those that simply act as trade routes, the report identifies China, India and Turkey as the three biggest counterfeit goods producers.

EUIPO and the European Union Agency for Law Enforcement Cooperation (EUROPOL) also recently published a report on IP Crime and its Link to Other Serious Crimes, analyzing various ways in which IP crime is connected to other forms of criminal activities, including money laundering, forced labor, food fraud, pharmaceutical crime, and drug trafficking. The report explains how IP crime supports the activities of organised criminal gangs, even though it is often mistakenly seen as ‘victimless’ crime, causing relatively ‘little’ harm.

Prepared by: Djurdja Krivokapić

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

Ukrainian Authorities Shut Down Production of Counterfeit Crop Protection Chemicals

The Ukrainian Security Service has recently put an end to a large-scale production of counterfeit crop protection chemicals in the city of Kharkiv in northeastern Ukraine.

The counterfeit chemicals for pest control and combating plant disease were intended to be sold to farmers throughout Ukraine. If they had entered the market, these poor-quality products could have caused substantial damage to the agricultural industry.

The counterfeit chemicals were manufactured and stored in private residences and production facilities in industrial areas of the city of Kharkiv and the Kharkiv region. During the raids, the authorities seized more than 50 tons of finished counterfeit products and 5 tons of toxic substances, as well as manufacturing equipment, including logo molds, packaging and labels featuring well-known trademarks.

Prepared by: Valentyna Martynenko

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

Hungarian Officials Seize Fake Apparel, Accessories

The Hungarian National Tax and Customs Administration (NTCA) officials recently seized more than 10,200 items of apparel and accessories infringing numerous trademarks, including Nike®, Adidas®, Tommy Hilfiger®, Karl Lagerfeld®, Ralph Lauren® and Hugo Boss®.

The goods, which are estimated to be worth approximately EUR 860,000 (USD 994,000) were discovered during the inspection of a truck on the M43 motorway in south-eastern Hungary.

Prepared by: Erika Farkas

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

Ukrainian Customs Seize Fake Footballs

Ukrainian customs officials in the port city of Odessa in southern Ukraine recently seized nearly 2,000 footballs infringing the UEFA Champions League® trademark. The fake goods arrived from Pakistan.

The 2020 UEFA European Football Championship, which was scheduled to take place in June and July 2020, has been postponed until 2021 due to the COVID-19 pandemic.

Prepared by: Valentyna Martynenko

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

Ten Cases, Ten Jurisdictions: Interesting Matters PETOŠEVIĆ Recently Handled

Bosnia and Herzegovina – Infringement Case for a French Car Manufacturer

In Bosnia and Herzegovina, we recently represented a French car manufacturer in a trademark infringement case against a leading importer and distributor of spare car parts in Bosnia, who was selling products that were infringing our client’s trademarks. We approached the infringer with a cease and desist letter and negotiated a favorable outcome at a minimal cost for the client.

For more information, please contact PETOŠEVIĆ Bosnia Head of Office Tarik Prolaz.

Bulgaria – Revocation Action for a Mexican Jewelry Manufacturer

After two years of court battle, in April 2020 the Supreme Court of Bulgaria confirmed the Bulgarian IPO’s decision to revoke a Bulgarian trademark against which we filed a non-use revocation action on behalf of a Mexican jewelry and watch manufacturer. The Bulgarian trademark was retrospectively revoked as of 2011 and the client was awarded the costs of judicial proceedings.

For more information, please contact PETOŠEVIĆ Bulgaria Associate Maxim Hristov.

Croatia – Trademark Opposition for a Leading Technology Company

In Croatia, we recently represented a well-known multinational technology company in an opposition against a national application for a trademark similar to one of our client’s well-known trademarks. Apart from the likelihood of confusion, we argued that the client’s earlier mark enjoyed reputation and enhanced distinctive character. The IPO upheld the opposition and rejected the national application for all stated goods and services.

For more information, please contact PETOŠEVIĆ Croatia Head of Office Ivan Kos.

Hungary – Infringement Case for a Well-Known Electric Vehicle Company

In 2019, we successfully represented an American electric vehicle and clean energy company in an infringement case against a Hungarian company that was using our client’s trademark and copyright without authorization on their website, social media and in their trade name. A successful outcome was achived – the Hungarian company changed its name, removed all infringing content from the internet and transferred the infringing domain name to our client.

For more information, please contact PETOŠEVIĆ Hungary Head of Office Balázs Csányi.

Romania – Trademark Opposition for a Well-Known Online Marketplace

In Romania, we recently assisted an American vacation rental platform in successfully opposing a national application for a trademark similar to their well-known trademark. While the opposition based on our client’s prior trademarks and their reputation in the EU was rejected in the first instance, our appeal before the IPO’s Board of Appeal was successful and the client’s trademark was acknowledged as a trademark with reputation in the EU.

For more information, please contact PETOŠEVIĆ Romania Associate George Irimescu.

Russia – Defending Nouryon’s Patents

In Russia, we recently represented a global specialty chemicals leader Nouryon in invalidation proceedings brought against their patents in Russia and the Eurasian Economic Union by a German chemical company BASF SE. In late 2019, in their effort to independently commercialize a surfactant composition in Russia’s massive mining market, BASF filed three invalidation actions against three of Nouryon’s patents – one Eurasian and two Russian patents – which cover the surfactant in question in Russia. Following our arguments and extensive discussions during three hearings in February 2020, the Russian IPO rejected BASF’s invalidation actions. With all three patents successfully defended, Nouryon has kept the exclusive right to commercialize the surfactant in Russia and license it to third parties.

For more information, please contact PETOŠEVIĆ Russia Patent Attorney Natalia Osipenko.

Serbia – Litigation for an Oil Company

In 2018, a Swiss oil company sued our client, a Serbian subsidiary of a well-known international oil holding company, for trademark infringement. The plaintiff argued that our client’s trademark used for labelling their fuel was confusingly similar to the plaintiff’s prior trademarks. The first instance court ruled in favor of the plaintiff, but we appealed this decision, and in March 2020, the second instance court reversed the first-instance decision and ruled that the trademarks were not confusingly similar.

For more information, please contact PETOŠEVIĆ Serbia Attorney at Law Dragana Vulović.

Slovenia – Trademark Prosecution for Traveljigsaw

In 2018, PETOŠEVIĆ Slovenia assisted Traveljigsaw Limited, a UK-based online car rental agency, in overcoming the refusal of their national trademark application for RENTALCARS.COM. The Slovenian IPO refused the trademark application stating that the mark is devoid of any distinctive character. We first filed a response to the provisional refusal and submitted evidence of the client’s previous extensive use of the trademark in Slovenia, but the IPO rejected the trademark application on absolute grounds. We then filed a lawsuit before the Administrative Court, which revoked the IPO’s refusal decision. The IPO re-examined the application, which subsequently led to a successful trademark registration.

For more information, please contact PETOŠEVIĆ Slovenia Associate Maja Žnidarič Plevnik.

Ukraine – Domain Name Case for CooperVision

In March 2020, PETOŠEVIĆ Ukraine successfully represented CooperVision International, one of the leading contact lens manufacturers, in a domain name dispute under the UA-DRP procedure before the WIPO Arbitration and Mediation Center. The unauthorized use of the client’s trademarks ceased and the disputed <.COM.UA> was transferred to the client. This decision was among the first ones issued by the WIPO Center following the introduction of the UA-DRP procedure, which recently became applicable to <.COM.UA> third-level domain names.

For more information, please contact PETOŠEVIĆ Ukraine Associate Igor Alfiorov.

Uzbekistan – Trademark Enforcement for Mars

PETOŠEVIĆ Uzbekistan recently represented Mars, Incorporated in an enforcement case that involved imposing administrative fines for trademark infringement on a local manufacturer of SNICKERS® candy bar lookalikes. Through a series of meetings and official requests between  January and March 2020, we persuaded the Ministry of Justice and the local IPO that they could, according to the newly adopted legislation, initiate administrative proceedings for trademark, copyright and patent infringement, which lead to a game-changing shift in Uzbek IP practice. To our knowledge, this ruling is the first of its kind in Uzbekistan since 1994.

For more information, please contact PETOŠEVIĆ Uzbekistan Head of Office Djakhangir Aripov.