IP News Eastern Europe
December 2022
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IP NEWS |
Romania Amends Trademark Law
On December 13, 2022, Romania adopted amendments to its trademark law enabling the Romanian Intellectual Property Office to handle revocation and invalidation applications as of January 14, 2023. Such applications are currently handled by the Bucharest Tribunal. Going forward, interested parties will be able to choose whether to bring an invalidation or revocation action before the Romanian IPO or before the court.
At the Romanian IPO, these applications will be handled by specialized boards consisting of trademark experts with at least three years of experience in the legal field. Board members will be restricted from being involved in any other IPO proceedings.
Revocation and invalidation applications will undergo a preliminary examination to establish whether formal requirements are met – namely, if they contain the parties’ identification details, data concerning the contested trademark and its holder, legal grounds on which the action is based (for invalidation actions, also the prior rights invoked), if the action is targeted against all or part of the goods and services, the substantive arguments and the supporting evidence.
The plaintiff will be given five days to correct any application deficiencies. An application meeting formal requirements will be transmitted to the defendant, who will be granted 30 days to file a statement of defence. The defendant’s response, if filed, will be transmitted to the plaintiff, who may file a counter-response within 10 days.
Once this stage is completed, the date of the first hearing will be set. Additional hearings will be possible upon justified request by the parties or if they become necessary as a result of the debates.
The IPO’s revocation and invalidation board decisions can be contested before the Bucharest Tribunal within 30 days from receipt. The Bucharest Tribunal rulings can be further appealed before the Bucharest Court of Appeal.
Further legislative changes concerning the structure and activities of the IPO boards are expected by January 14, 2023. For the time being, no official fees have been established for the submission of revocation and invalidation actions, but it is expected that they will be adopted soon.
By: Aura Campeanu, Mara Marinescu and George Irimescu
For more information, please contact romania@petosevic.com.
Unitary Patent System Entry into Operation Delayed until June 1, 2023
On December 2, 2023, the Unified Patent Court (UPC) announced that the Unitary Patent (UP) system’s entry into operation has been postponed from April 1 to June 1, 2023, while the start of the sunrise period has been postponed from January 1 to March 1, 2023.
The additional time is intended to allow users to prepare themselves for the authentication which will be required to access the UPC’s Case Management System and to sign documents, as users will need to be equipped with both a client authentication (hard device) and a qualified electronic signature. Further information on the authentication is available on the UPC website, including a list of providers who have informed the UPC that they meet the required technical standards.
No further delays are expected as all other preparatory work is on track and in line with the implementation roadmap.
Despite the postponement of the UPC and the sunrise period, the starting date of the transitional measures offered by the EPO – January 1, 2023 – remains unchanged.
Prepared by: Djurdja Krivokapić
For more information, please contact mail@petosevic.com.
Serbian IPO Amends Certain Official Fees
Amendments to the Law on the Republic Administrative Fees entered into force in Serbia on December 20, 2022 amending certain official fees payable to the Serbian Intellectual Property Office.
Most notably, the fee for filing a request to enter a European patent into the IPO’s Patent Register increased from EUR 3.5 to EUR 77. Also, a EUR 63 fee for issuing a Letter Patent in electronic form has been introduced (this service was previously available but free of charge). Obtaining a paper copy of a Letter Patent is no longer mandatory, but it is still possible and costs approx. EUR 2 per page.
Prepared by: Nada Milović
For more information, please contact serbia@petosevic.com.
Ukrainian Travel Company Fined for Violating Antitrust Legislation
The Ukrainian Antimonopoly Committee has recently fined a Ukrainian travel company Pilot-Ukraine LLC for violating the local antitrust legislation by using a trade name and logo confusingly similar to those of its competitor – Ukrainian travel company Pilot LLC.
The proceedings were initiated by Pilot LLC, which has been using its logo (left) and trade name since 1998. Pilot-Ukraine LLC started operating in 2020 under a similar trade name and logo (right) without obtaining consent from the plaintiff. Pilot LLC argued that Pilot-Ukraine LLC was established by four of Pilot LLC’s former employees who were familiar with the plaintiff’s activities and had access to their internal records. Both companies carry out the same type of business activities.
The Ukrainian Antimonopoly Committee found that similar trade names and logos may cause consumer confusion and that they may also provide the defendant with a competitive advantage through free-riding on the plaintiff’s goodwill and recognition.
Prepared by: Valentyna Martynenko
For more information, please contact ukraine@petosevic.com.
WIPO Decreases Individual Designation Fee Under Hague Agreement for Hungary
According to a recent WIPO announcement, the new individual fee payable when Hungary is designated in an international application under the Hague Agreement Concerning the International Registration of Industrial Designs will be applicable as of January 1, 2023.
Filing an international application designating Hungary will cost CHF 47 (previously CHF 59) for the first design and CHF 11 (previously CHF 14) for each additional design.
The same fees will apply for renewals — CHF 47 (previously CHF 59) for the first design and CHF 11 (previously CHF 14) for each additional design. The change is due to the exchange rate fluctuations.
Prepared by: Erika Farkas
For more information, please contact hungary@petosevic.com.
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COMPANY NEWS |
Three Interesting Matters PETOŠEVIĆ Handled in 2022
Romania – Trademark Infringement Case Involving a Pharmaceutical Company
We represented a Spanish pharmaceutical company in a court action against a leading Romanian generic drug company that was using the client’s European trademark in Romania while also obtaining a confusingly similar national trademark. We filed a lawsuit based on three different grounds – trademark infringement, revocation based on non-use, and bad-faith registration of a confusingly similar trademark. The first-instance court decided in our favor on all three grounds and the Bucharest Court of Appeal upheld the first-instance decision and dismissed the defendant’s appeal.
An important aspect of this case which the courts recognized and upheld is related to the relevant public and degree of attention. The courts departed from the prevailing position that the degree of attention in case of prescription drugs is relatively high, emphasizing that consumers can indeed be confused in terms of prescription drugs, too. In terms of bad faith, the court confirmed that pharmaceutical companies are called to act responsibly, actively and in good faith, and that therefore the defendant should have known, at the moment they filed for trademark registration, that the client’s mark was already in use on the market.
The defendant has filed a recourse before the High Court of Justice. It will be interesting to see if the recourse will pass the court’s admissibility criteria.
For more information, please contact PETOŠEVIĆ Romania Head of Office Aura Campeanu.
Uzbekistan – Fighting Candy Lookalikes
We have been advising a multinational confectionery manufacturer on the course of action against lookalikes in Uzbekistan, Tajikistan, Kazakhstan and Kyrgyzstan. Our advice is based on our own investigations and on reports from the client’s regional representatives. In 2022, we undertook the following actions:
- Legal actions against Uzbek manufacturers of lookalike products before the Uzbek Ministry of Justice;
- Enforcement of a court ruling against an Uzbek manufacturer;
- Investigations of wholesale markets in Kyrgyzstan and Tajikistan regarding the sources of lookalike product distribution in those markets;
- Sending cease and desist and warning letters to the sellers of lookalikes and counterfeits in Kazakhstan and Tajikistan;
- Distribution of educational letters in Tajikistan and Kyrgyzstan;
- Market monitoring in three Uzbek cities.
For more information, please contact PETOŠEVIĆ Uzbekistan Head of Office Djakhangir Aripov.
Ukraine – Obtaining a Well-Known Status for Energy Drink Trademark
We assisted a leading energy drink manufacturer in obtaining a well-known status for their trademark in Ukraine. After collecting the necessary evidence and conducting a market poll, we submitted our application before the IPO’s Board of Appeal. After the first hearing, the Board requested additional supporting documents, which were subsequently accepted. After the second hearing, the Board issued a positive decision regarding the well-known status in Ukraine.
For more information, please contact PETOŠEVIĆ Ukraine Associate Igor Alfiorov.
