PETOŠEVIĆ

June 2021

Serbia Adopts New Trade Secret Law

The new trade secret protection law, which harmonizes Serbian legislation with Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure, entered into force in Serbia on June 5, 2021.

Under the new law, in order for information to be considered a trade secret, it needs to:

• Have commercial value because it is not generally known or easily available to third parties who normally come into contact with this type of information;
• Be protected by its holder by appropriate measures in order to preserve its secrecy.

The new definition expands the scope of information that is considered a trade secret. Under the old trade secret law, trade secret was defined as information that

had commercial value because it was not generally known or available to third parties that could gain economic advantage from its use and also as information that could harm its holder if disclosed to third parties.

In order for a trade secret to enjoy legal protection under the new law, trade secret holders must adopt internal acts on the protection of trade secrets and undertake other prescribed protection measures, such as using the label "trade secret" on confidential documents, restricting access to the premises or files where confidential information is located and concluding confidentiality agreements with persons who may have access to trade secrets.

Under the new law, foreign trade secret holders have the same rights as domestic ones only if this protection arises from international agreements applicable in Serbia or from the principle of reciprocity. The previous law did not distinguish between foreign and domestic holders.

Previously, the disclosure of a trade secret was not considered misappropriation only if it was done in order to reveal an act punishable by law. Under the new law, a trade secret can be disclosed under certain conditions in the following cases:

• For the purpose of exercising the right to freedom of expression and information;
• For the purpose of disclosing criminal acts and other illegal acts;
• For the purpose of protecting the rights under a law governing a specific subject matter (lex specialis);
• When employees disclose trade secrets to their representatives in the performance of their official duties;
• In connection with the provision of legal assistance by a lawyer.

The new law also introduces the following novelties in civil proceedings for trade secret misappropriation:

• Longer deadline for filing a lawsuit – the deadline is now one year (as opposed to six months under the previous law) from the day on which the plaintiff learned of the misappropriation, and a maximum of five years (as opposed to three years under the previous law) from the day of the misappropriation;
• Special delivery rules to protect secrecy;
• New rules for calculating damages;
• The possibility of filing a lawsuit against an intermediary, i.e. a person who provides services that a third party uses in acts of the misappropriation or imminent misappropriation of a trade secret.

Finally, criminal provisions have been expanded – in addition to fines for legal entities, the new law introduces fines for entrepreneurs and natural persons.

By: Djordje Marković

For more information, please contact Djordje Marković at our Serbia office.

CIS Members Sign New Agreement on Cooperation in Prevention and Repression of the Use of False Trademarks and GIs

On May 28, 2021, the members of the Commonwealth of Independent States (CIS – Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan and Uzbekistan) signed the Agreement on Cooperation in Prevention and Repression of the Use of False Trademarks and Geographical Indications, which is intended to replace the existing Agreement of June 4, 1999.

The new Agreement updates and expands the existing regulatory framework for the Parties’ joint planning and implementation of measures to prevent, detect, and repress the production and sale of goods bearing false trademarks and geographical indications. The Agreement also foresees other forms of cooperation including the exchange of relevant information, promotion of joint research in the field of industrial property, and organization of seminars and conferences.

The provisions of the 1999 Agreement have also been updated because Russia, Tajikistan, and Kazakhstan acceded to the World Trade Organization (WTO) over the last decade – in the new Agreement, the Parties that are WTO members reaffirm their obligations set forth in the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), while non-WTO members commit to following the principles and rules set forth in the TRIPS Agreement.

The new Agreement will enter into force 30 days after the third Party deposits a written notification about its fulfillment of domestic procedures necessary for the Agreement to enter into force. For the Parties that fulfill their domestic procedures later, the Agreement will enter into force 30 days from the date they deposit their written notifications.

By: Anastasia Khioni

For more information, please contact Anastasia Khioni at our Belarus office.

Albania Joins DesignClass          

On May 31, 2021, the Albanian Intellectual Property Office started using the list of terms from the harmonized database of product indications (HDBPI) in DesignClass, the European Union Intellectual Property Office’s (EUIPO) database allowing users to search and translate product indications needed to apply for design protection.

DesignClass now offers users the opportunity to search and translate harmonized concepts in 29 languages from 41 IP offices.

Prepared by: Djurdja Krivokapić

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

Slovenian Customs Detained EUR 5.5 Million Worth of Counterfeits in 2020

The number of customs detentions in Slovenia in 2020 was 520, slightly more than in 2019, when there were 469 detentions. Although the number of detained items increased from 324,401 in 2019 to 433,517 in 2020, the estimated value of the detained items decreased to EUR 5.5 million, as opposed to EUR 6.1 million in 2019.

The table below shows the Slovenian Customs’ statistics on the detentions of IPR infringing goods for the period 2018-2020:

The most prevalent counterfeit goods were clothes, footwear, accessories, car parts, toys and audio/video devices. The majority of counterfeits, as in previous years, arrived by sea through the Port of Koper in southwest Slovenia and by mail. The goods arriving by sea were mostly intended for recipients in other EU countries (Czech Republic, Hungary, Croatia and Austria). The goods arriving by mail were intended for recipients in Slovenia. The majority of the detained counterfeits originated in China, Hong Kong, Turkey, Singapore and India. Most of the detained counterfeits were destroyed under the Customs’ supervision.

In terms of international cooperation in the field of anti-counterfeiting, Slovenia was one of the 24 countries that participated in operation LUDUS, which ran between October 2020 and January 2021 targeting counterfeit toys – 10,196 toys were detained and destroyed in Slovenia as part of this operation, organized by Europol and supported by the European Anti-Fraud Office (OLAF) and the European Union Intellectual Property Office (EUIPO). Slovenia also participated in an international operation Pangea XIII, which targeted the online sale of counterfeit and illegal medicine. This operation was coordinated by INTERPOL and the World Customs Organization (WCO) and took place in March 2020.

Prepared by: Kaja Lavrič

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

Romanian Customs Detain EUR 250,000 Worth of Fake Goods

On May 17, 2021, the Romanian customs officials at the port of Constanta in eastern Romania detained 1,190 headphone sets, 240 graters and 36 remote control toy cars believed to infringe the Apple®, Nicer Dicer® and Monster® trademarks respectively.

The goods, estimated to be worth approximately EUR 250,000 (USD 296,000), were discovered during the inspection of a container arriving from China and were intended for a company in the capital of Bucharest.

Prepared by: Bogdan Neagoe

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

Hungarian Officials Detain Fake Electronics and Accessories

The Hungarian National Tax and Customs Administration (NTCA) officials recently detained nearly 300 loudspeakers and more than 4,300 bags and hats believed to infringe several trademarks, including Jeep® and Lacoste®. 

The goods were detained during the inspection of two trucks, on two separate occasions, on the M5 motorway in southern Hungary, and are estimated to be worth approximately EUR 100,000 (USD 120,000).

Prepared by: Erika Farkas

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

Kazakh Officials Shut Down Production of Fake Spirits

On June 3, 2021, the Kazakh Economic Investigations Department officials put an end to the production of counterfeit vodka and cognac established in two workshops in the city of Petropavlovsk in northern Kazakhstan. 

During the raids, the officials detained more than 40,000 liters of counterfeit spirits, estimated to be worth approximately EUR 223,000 (USD 267,000). The spirits were produced in workshops with unsanitary conditions, using tap water and artificial flavors and dyes, and were packaged in five-liter plastic containers.

Prepared by: Nurgul Mendigaliyeva

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

IP Stars Ranks PETOŠEVIĆ Offices and Practitioners in Six Jurisdictions

MIP’s IP Stars trademark, patent, general IP and individual practitioner rankings were recently published, recognizing PETOŠEVIĆ offices and individuals for outstanding work in six jurisdictions.

The IP Stars guide is published by Managing Intellectual Property (MIP), a well-respected publisher in the IP industry.

The results feature firms ranked according to practice areas in different tiers, as highly recommended or recommended. The number of tiers varies by jurisdiction, while in smaller countries rankings are not divided into practice areas and sub-practice areas.

PETOŠEVIĆ was ranked as follows:

Bulgaria – Trademark – Tier 3
Croatia – Intellectual property – Tier 2
Romania – Trademark prosecution –  Tier 2

Romania – Trademark contentious – Notable firm

Romania – Patent prosecution – Recommended
Serbia – Intellectual Property – Tier 1
Slovenia – Intellectual property – Recommended
Ukraine – Trademark – Tier 3

Ukraine – Patent – Notable firm

The following PETOŠEVIĆ practitioners were ranked:

Dimitar Batakliev – Trademark Star
Aura Campeanu – Trademark Star
Ivan Kos – Trademark Star
Barbara Mencin – Trademark Star
Dina Petošević – Trademark Star, Patent Star
Mihajlo Zatezalo – Trademark Star
Mirjana Živković – Trademark Star, Patent Star

For more information and to read testimonials about PETOŠEVIĆ and our team, please visit our Rankings page.

Dimitar Batakliev Contributes Bulgaria Chapter to Wolters Kluwer European SPC Guide

PETOŠEVIĆ Bulgaria Head of Office Dimitar Batakliev recently contributed the chapter on Bulgaria to the “European SPCs Unravelled” guide to supplementary protection certificates in Europe, published by Wolters Kluwer.

“European SPCs Unravelled” is a handbook which provides a comprehensive review of supplementary protection certificate (SPC) law in Europe, covering all substantive and procedural aspects of prosecution, enforcement and invalidation, as well as SPC-related aspects of unfair competition law.

For more information, please contact Dimitar Batakliev at our Bulgaria office.