IP News Eastern Europe
February 2023
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IP NEWS |
Montenegro Amends Trademark and Patent Laws
Amendments to the patent and trademark laws entered into force in Montenegro on January 18, 2023. The trademark law amendments are intended to harmonize national legislation with Directive (EU) 2015/2436 and with the Singapore Treaty on the Law of Trademarks, while the patent law amendments aim to harmonize national legislation with Directive (EU) 2019/933.
Trademark Law Amendments
The graphical representation requirement has been removed, 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. Sound marks may now be represented by audio files and not only by musical phrases shown in notation. Trademarks may now also consist of personal names and the three-dimensional features such as shape or packaging of goods, which was previously not directly specified in the law.
The list of absolute grounds for refusal has been expanded. The novelty is that a trademark will not be registered if:
- It does not adhere to the laws of the EU or Montenegro on geographical indications and appellations of origin, traditional expressions for wines, and traditional specialities guaranteed (TSGs); or
- It consists of the earlier denomination of a plant variety registered in Montenegro or the EU or reproduces it in its essential elements, while referring to a plant variety of the same or closely related species.
If a trademark opposition is based on an earlier trademark which has a reputation in Montenegro, the later trademark that is identical or similar to the earlier mark will not be registered regardless of whether the goods or services of the two marks are identical, similar or not similar. This was previously not clearly defined in the law.
Two new types of unathorized use of a trademark have been introduced:
- Use of a mark as a trade name or company name or part of a trade name or company name; and
- Use of a mark in comparative advertising in a manner that is contrary to the regulations on misleading and comparative advertising.
Previously, when suspending a trademark opposition proceeding while negotiating an agreement, parties had to reach an agreement within six months. Now, they have to reach an agreement within 24 months.
Provisions relating to licensing, continuation of the procedure and correction of errors in applications and registrations have been aligned with those of the Singapore Agreement of the Trademark Law.
Cancellation (on absolute and relative grounds) and non-use cancellation procedures are now conducted before the Intellectual Property Office (IPO), unlike before when they were conducted before the court. This is expected to make the procedures more efficient due to the IPO’s more extensive knowledge of IP matters.
Finally, the amendments introduced the simplified procedure for the destruction of counterfeit goods, which will make IP rights enforcement before the trade inspection authority quicker and more cost-effective.
Patent Law Amendments
The amendments to the Law on Patents introduce the Supplementary Protection Certificate (SPC) manufacturing waiver, which will enter into force when Montenegro joins the European Union. Once Montenegro joins the EU, companies that are locally based will be allowed to manufacture a generic or biosimilar version of an SPC-protected medicine during the SPC term, under two conditions:
- For the purpose of exporting to countries where SPC protection is not available or not enforceable; or
- For stockpiling during the final six months of the SPC term in order to place the product on the EU market once the SPC expires.
By: Mladen Čolović
For more information, please contact Mladen Čolović at our Montenegro office.
Further Changes to Madrid System Regulations Enter into Force
Further amendments to the Regulations under the Protocol Relating to the Madrid Agreement entered into force on February 1, 2023, following recent changes that became effective on November 1, 2022.
Representation of Marks
Applications no longer need to include graphical reproductions of the mark which fit into a designated box. Now, applicants need to file a representation of the mark in or with the application. This representation may be visual, not exceeding 20 centimeters in length or width, or it may be provided in a single digital file in the following formats:
- JPEG, PNG or TIFF for images;
- WAV or MP3 (not exceeding 5 MB) for sounds; or
- MP4 (not exceeding 20 MB) for videos.
However, Member States of the Madrid Protocol will continue to apply the relevant domestic legal provisions. Those states that still require a graphical representation of the mark might not grant protection to sound, motion or multimedia marks.
Representation of Color Marks
If an applicant’s mark is represented in black and white in their basic application or registration, and color is claimed as a distinctive feature of the mark in their international application, the applicant now only needs to provide a representation of the mark in color in their international application. It is no longer necessary to provide the representation both in black and white and in color.
Color as Distinctive Feature
Applicants can now claim color as a distinctive feature when their basic mark is protected or meant to be protected in color, even when a corresponding color claim does not appear in the basic mark and the representation of the basic mark is not in color. Such a claim must be certified by the Intellectual Property Office (IPO) of origin.
Representation of Marks in Provisional Refusal Notifications
If a provisional refusal is based on an earlier mark, local IPOs no longer need to provide a representation of the earlier mark in the notification on provisional refusal. They may now only indicate to the applicant how to access this representation, i.e. by providing a link to an online database or publication.
Communication with WIPO
All communication with the International Bureau of WIPO must now be conducted electronically, either through Contact Madrid or by using eMadrid.
By: Ana Radoman
For more information, please contact Ana Radoman at our Serbia Office.
Kazakhstan Allows Inspections of Small Businesses Suspected of IPR Infringement if Based on “Relevant Grounds”
The President of Kazakhstan signed Decree No. 44 on December 7, 2022, extending the ban on inspections of small businesses until January 1, 2024, but allowing inspections based on relevant grounds starting from the Decree’s entry into force on January 1, 2023.
Decree No. 44 amends Decree No. 299, which limited administrative actions that IPR owners could take against small businesses suspected of IPR infringement and which suspended police actions such as raids of premises suspected of storing counterfeit goods. The ban took effect on January 1, 2020 and continued until January 1, 2023.
Decree No. 44 extends this ban but introduces a new clause regarding ‘unscheduled inspections’, which allows inspections of small businesses (individual entrepreneurs and legal entities whose average annual number of employees does not exceed 100 people) that are based on relevant grounds.
According to the Kazakh Entrepreneurial Code, one of the grounds for an unscheduled inspection is an appeal of an individual or a legal entity regarding a business’s illegal activity, if there are convincing reasons and supporting evidence. This means that IPR owners can take administrative actions against small businesses suspected of IPR infringement if their appeals are grounded and supported by evidence. This is good news for trademark owners, because many local infringers involved in counterfeiting activities correspond to the requirements of a small business entity, and even if they do not, mid-size infringers may re-organize their business entities so that they consist of several small business entities instead of one medium entity.
It is also possible to initiate cases under the Criminal Code, but thresholds based on numbers and values of infringing goods must be met.
By: Sultan Tleubekov
For more information, please contact kazakhstan@petosevic.com.
Uzbekistan Launches Online Filing of Open Patent License Applications
On February 7, 2023, the Uzbek Ministry of Justice, which has authority over the Uzbek IPO, passed an order enabling patent holders to file applications for an open patent license online. While applications could previously only be filed on paper, in either Uzbek or Russian, they can now only be filed online, and only in Uzbek.
Open licenses are non-exclusive licenses which allow any person to make use of the patent by entering into a license agreement with the patent holder. The terms of the open license are negotiable and any disputes are reviewed by courts.
The Industrial Property Protection Portal, which was announced in 2022 and recently launched by the Ministry of Justice, will serve as the main portal for filing open license applications for patents, utility models, industrial designs, plant varieties and animal breeds, and for publishing information on such applications.
Applicants must pay a state fee (EUR 5 for residents and EUR 90 for non-residents) and attach the following documents to the application:
- Power of attorney (when the application is submitted by a representative or patent attorney);
- Consent of all patent holders (if there are several).
The original letters patent or its duplicate is no longer required.
The Ministry of Justice will inform the patent holder of the application acceptance through the portal and will publish information about it in its Official Bulletin. Within three days from publication, the Ministry of Justice will send information on the open license’s registration date to the patent holder.
By: Djakhangir Aripov and Altynbek Amraev
For more information, please contact Djakhangir Aripov at our Uzbekistan office.
Ukrainian Supreme Court Upholds Antimonopoly Committee Decision in Unfair Competition Case
The Ukrainian Supreme Court recently upheld the decision of the Ukrainian Antimonopoly Committee to impose a fine of EUR 295,000 (USD 360,000) on the Ukrainian pharmaceutical company Zdorovye LLC for violating the local competition protection legislation by using a confusingly similar packaging design as its competitor. The defendant's appeal of the Committee's decision in court lasted for almost two years.
Ukrainan drug manufacturer Darnitsa Pharmaceutical Company PrJSC initiated the proceedings, claiming that Zdorovye designed the packaging for its Citramon-Zdorovye tablets as a copy of Darnitsa’s Citramon-Darnitsa, a well-known pain relief medicine among the average consumers in Ukraine. The Antimonopoly Committee concluded that the similar packaging designs may cause a likelihood of confusion. This was also confirmed by a consumer survey organized by the Antimonopoly Committee specialists, with 90,5% of respondents stating that the design of the two packages is almost identical.
Zdorovye LLC appealed the decision in court. While the first instance court supported the Committee’s position, the Court of Appeal stated that the Committee’s decision was invalid. The Supreme Court, in turn, ruled that the Court of Appeal came to a groundless conclusion that the Committee did not have the right to conduct a consumer survey, therefore failing to fulfill its duty to evaluate all the evidence submitted by the parties. The Supreme Court sent the case back for reconsideration, after which the Court of Appeal upheld the Committee’s decision, which has recently entered into force.
Prepared by: Valentyna Martynenko
For more information, please contact ukraine@petosevic.com.
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COMPANY NEWS |
PETOŠEVIĆ Highly Ranked by WTR 1000
World Trademark Review has recently published its annual WTR 1000 directory identifying the world’s leading trademark professionals. Seven PETOŠEVIĆ offices and 15 practitioners have been recognized in the 2023 edition.
Our offices have been ranked as follows:
Albania — Recommended as one of the top IP firms
Bulgaria — Silver band
Croatia — Gold band
Romania — Enforcement and Litigation – Silver band; Prosecution and Strategy – Silver band
Serbia — Gold band
Slovenia — Silver band
Ukraine — Silver band
PETOŠEVIĆ practitioners recognized by WTR 1000 are Predrag Anokić, Dimitar Batakliev, Aura Campeanu, Balázs Csányi, George Irimescu, Yuriy Karlash, Oleh Karpenko, Ivan Kos, Vladimir Nika, Dina Petošević, Slobodan Petošević, Anamarija Stančić Petrović, Natalia Stetsenko, Mihajlo Zatezalo and Mirjana Živković.
For more information and to read client testimonials about PETOŠEVIĆ and our team, visit our Rankings page.
Igor Alfiorov Joins INTA’s Europe Global Advisory Council
PETOŠEVIĆ Ukraine Associate Igor Alfiorov recently joined INTA’s Europe Global Advisory Council (EGAC).
Established in 2014, the EGAC is one of INTA’s regional advisory councils whose objective is to advise INTA on public policy and advocacy efforts in Europe, as well as to grow corporate membership and improve communication with members in the region.
Igor is an active INTA member and is currently also serving on the Legislation and Regulation Committee for the term 2022-2023.
For more information, please contact Igor Alfiorov.
Aura Campeanu Speaks at Romanian IPO Seminar on Designs
On February 3, 2023, PETOŠEVIĆ Romania Head of Office Aura Campeanu presented during a seminar on industrial designs organized by the Romanian Intellectual Property Office, the "Nicolae Titulescu" University of Bucharest and the Scientific Association of Intellectual Property Law.
The seminar, intended to mark 30 years from the adoption of the first law on industrial designs in Romania, was attended by judges with special competence in IP matters from the CJEU and Bucharest courts, as well as examiners from the Romanian IPO, professors, attorneys, legal advisors and representatives from the automotive industry most interested in the protection of designs and utility models.
Aura was invited to speak about 3D printing as an emerging technology and about the EU legislation’s potential impact on IP rights, particularly from a design law perspective.
You can see the photos from the seminar in our gallery.
For more information, please contact Aura Campeanu at our Romania office.
