PETOŠEVIĆ

October 2020

Protocol on Eurasian Design Patents Ratified by Kyrgyzstan, Azerbaijan and Armenia

On October 15, 2020, Kyrgyzstan deposited its instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention.

Azerbaijan and Armenia have ratified the Protocol by adopting laws on its ratification on May 5 and May 11, 2020 respectively, but so far Kyrgyzstan is the first Eurasian Patent Organization (EAPO) member state that has deposited its instrument of ratification with the Director General of the WIPO.

The Protocol was adopted by EAPO member states on September 9, 2019, introducing the Eurasian system of protection for industrial design patents, along with the already existing regional protection for inventions.

There are eight EAPO member states: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. So far, the EAPO member states that have signed the Protocol are Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan, Russia and Tajikistan, while the delegations of the remaining two members, Belarus and Turkmenistan, have announced the implementation of domestic procedures necessary for their participation in the Protocol.

The Protocol will enter into force for the first three states that have ratified or acceded to it three months after the third state deposits its instrument of ratification. In all other member states, the Protocol will enter into force three months after the state’s accession or deposit of its instrument of ratification.

According to the Protocol, Eurasian design patent applications will be filed with the Eurasian Patent Office (EAPO) either directly or through the national patent office of an EAPO member state. All applicants will follow uniform examination requirements, use only the official language of the EAPO – Russian, and pay a uniform procedural fee. Once granted, Eurasian design patents will be valid for five years counting from the application filing date, and will be renewable for additional five-year periods up to four more times, so that the maximum term of protection does not exceed 25 years from the application filing date.

Prepared by: Anastasia Khioni

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

Uzbekistan’s Competition Watchdog Launches Register of IPR Infringers

On September 22, 2020, the Antimonopoly Committee of the Republic of Uzbekistan (ACRU) launched a register of businesses found liable for unfair competition practices involving IPR infringement in 2020.

The register displays infringers’ names, the grounds for legal liability, a brief description of the infringement (including the name of the right holder, the number and date of the ACRU’s decision and information on infringer’s compliance with the decision), as well as the images of genuine and counterfeit or lookalike products.

The register aims to increase the transparency of the ACRU’s activities and raise awareness about potential liabilities associated with manufacturing IPR-infringing products.

Generally, if the competition regulations have been violated, the ACRU and its local divisions may decide to establish a breach of competition law and issue a decision ordering the infringer to cease the unfair practices. A right holder can bring an unfair competition action before the ACRU if they are the infringer’s direct competitor in Uzbekistan, in which case the right holder must provide evidence of their goods’ presence in Uzbekistan. It takes around one or two months for the ACRU to review a case and issue a ruling, but the decision is not fully enforceable until one month after it is issued, and it can be challenged within three months from the date it is issued before an administrative court. The court hearings can last from six months to two years until the final, incontestable ruling is obtained.

Bringing an unfair competition action as an option for enforcing IPRs can prove to be quite costly, time consuming and only moderately efficient due to:

• Low administrative fines for competition law violations – between EUR 91 (USD 108) and EUR 181 (USD 215) under Art. 178 of Uzbekistan’s Code on Administrative Liability;
• Absence of compulsory seizures and destructions of infringing goods and equipment; and
• The extreme difficulty in invoking criminal liability for repeat infringers under Art. 183 of the Criminal Code. 

However, initiating an unfair competition action and obtaining a favorable ACRU ruling has shown to be influential in convincing 50-60% of infringers to cease their current activities as well as future infringements.

As Uzbekistan intends to accede to the WTO in the near future, it is expected that more efficient administrative and criminal measures against IPR violations will be adopted in the next few years.

By: Djakhangir Aripov

For more information, please contact Djakhangir Aripov at our Uzbekistan office.

Kazakhstan Introduces Mandatory Labeling of Tobacco Products

On September 10, 2020, Kazakhstan adopted Resolution No. 568 introducing mandatory labeling of tobacco products. The labeling requirements entered into force on October 1, 2020 for filtered cigarettes, while other types of tobacco products, such as cigars, cigarillos and heated tobacco, will be subject to mandatory labeling from April 1, 2021.

All tobacco products in Kazakhstan will need to include a unique identifier on their packaging, a Data Matrix code, containing information such as the product’s serial number and manufacturer’s name. The sale of tobacco products will only be possible with the use of a 2D barcode scanner, which will read the information contained in the Data Matrix code.

It is expected that the new labeling system will ensure market transparency and prevent the circulation of counterfeit goods in the country. Because the new labeling requirements involve additional costs, tobacco product prices will increase by 6%.

Prepared by: Dayana Auezova

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

Moldova to Establish IPR Protection Information Platform

On September 30, 2020, the Moldovan Government approved the Decision on the Information Platform in the Field of Protection of Intellectual Property Rights, establishing a plan for the creation of an information system intended to improve interinstitutional communication and coordination of intellectual property protection.

The information platform will consist of two information systems:

• Information System in the Field of Protection of Intellectual Property Rights, which will be owned by the Moldovan Intellectual Property Office and which will facilitate the exchange of data between the main actors involved in IPR enforcement; and

• Information System “Register of Applications for Action”, which will be owned by Moldovan Customs and which will allow right holders and their representatives to submit and monitor online applications for IPR enforcement at borders. This system will also provide Customs with a mechanism for managing these applications.

The development of the information platform is one of the commitments made by Moldova under the Moldova-EU Association Agreement.

Prepared by: Djurdja Krivokapić

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

Uzbekistan Announces Upcoming Improvements to its IPR Protection System

On October 12, 2020, the President of Uzbekistan announced various measures intended to improve the system of intellectual property rights protection in the country.

The Ministry of Justice and the Agency on Intellectual Property have been instructed to develop a three-year strategic plan and organize broad discussions on the topic of IPR protection involving all relevant agencies, regional authorities, universities and research institutions.

The President announced that an online database of IP rights would be created in the first quarter of 2021. He also highlighted the importance of establishing a system of training for IP valuators in cooperation with experts from the World Intellectual Property Organization.

The Ministry of Investments and Foreign Trade has been asked to encourage international registration of national trademarks and support their entry into the global market. Interestingly, so far only 72 Uzbek trademarks have been approved for international registration.

The President also announced an initiative intended to prevent the registration of trademarks identical to well-known international brands. Finally, he announced that the Agency of Information and Mass Communications and the Agency on Intellectual Property will monitor entertainment sites and radio and television channels registered in Uzbekistan in order to combat copyright infringement.

It remains to be seen how the announced measures will be implemented in practice, and how they will affect the local IPR protection system in the future.

Prepared by: Djakhangir Aripov

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

Hungarian Officials Seize EUR 5.5 Million Worth of Fake Goods from January-August 2020

Hungarian National Tax and Customs Administration (NTCA) officials seized counterfeit goods estimated to be worth approximately EUR 5.5 million (USD 6.5 million) between January and August 2020. The seized products include nearly 71,000 items of clothing, more than 25,000 pairs of shoes, over 11,000 bottles of perfume, almost 9,000 litres of detergent and many other types of goods.

The number of seized products has not significantly increased compared to 2019, but while last year the most popular counterfeit items were electronic devices and perfumes, fake clothes represent 75% of all seized products in 2020.

Prepared by: Erika Farkas

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


 

Serbian Customs Seize Fake Apparel, Footwear, Watches

On September 29, 2020, Serbian customs officials seized more than 100 jackets, vests and sweatshirts and over 50 pairs of sneakers believed to infringe the Nike®, Adidas®, Puma® and Reebok® trademarks. The goods were seized during the inspection of a courier van outside the city of Niš in southern Serbia.

On October 13, 2020, while inspecting a car travelling from Germany to Kosovo at the Mutivode administrative crossing point, the customs officials also seized 6 wristwatches believed to infringe the Rolex®, Hugo Boss® and Calvin Klein® trademarks.

Prepared by: Djurdja Krivokapić

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

Ana Stojanović Moderates Webinar as Part of MARQUES Month

On September 21, 2020, PETOŠEVIĆ Serbia Attorney at Law Ana Stojanović moderated an online roundtable on sustainability and brand value as part of MARQUES Month, a series of online events held in September 2020 instead of the association’s 34th Annual Conference.

Ms. Stojanović organized the webinar with fellow members of the MARQUES Intellectual Asset Management Team. The discussion centered on the impact of sustainability initiatives on brand value, the consumers’ perception of this issue and their increasing demand for sustainable products and services, as well as on how to tell the difference between genuine sustainable brands and those which employ false advertising.

One of the terms discussed was the “triple bottom line”, which illustrates that companies should consider three types of effects that their activities produce – environmental, social and financial, i.e. companies should develop their businesses in a way that will benefit the environment and society, and also guarantee the financial tenability of the business itself. The panelists shared their experience working with brands which were developed with sustainability as a core value.

For more information, please contact Ana Stojanović at our Serbia office.