PETOŠEVIĆ

September 2021

Serbian Court Issues Important Decision on Fake Car Parts

On July 19, 2021, the Commercial Court in Belgrade issued a first-instance decision stating that the import and sale of car parts visually identical to those protected by industrial design registrations valid in Serbia constituted industrial design infringement. This is the first ruling of its kind in Serbian practice, and is therefore significant because it is likely to influence future decisions related to counterfeit car parts.

PETOŠEVIĆ Serbia represented the right holders, French car manufacturer Renault and its Romanian subsidiary Dacia, in court proceedings against a Serbian company that was distributing replacement headlights, side rearview mirrors and grilles for the Dacia Sandero car without the plaintiffs’ consent. The car parts were visually identical to the original ones protected by Renault’s designs and they bore Dacia’s trademarks.

First, an attempt was made to settle the matter out of court. A Cease and Desist letter was sent to the Serbian company, who refused to comply with the plaintiff’s demands. A request for securing evidence was then filed with the Commercial Court in Belgrade. The court granted the request, but the defendant refused to allow PETOŠEVIĆ Serbia representatives and Commercial Court officials into their premises. Finally, a lawsuit was filed with the Commercial Court on November 15, 2017.

During the proceedings, which lasted nearly four years, two court-appointed intellectual property expert witnesses prepared expert opinions confirming both design and trademark infringement. A court-appointed financial expert witness determined the damage caused by the infringement based on the number of counterfeit car parts sold by the Serbian company between 2014 and 2020 (200 headlights, 30 side rearview mirrors and 71 grilles). Finally, the Commercial Court ruled in favor of the plaintiffs and, for the first time in Serbian practice, stated that the import and sale of replacement car parts visually identical to those protected by industrial design registrations constituted industrial design infringement. The fact that the court also awarded damages in this case is important because it is very rare in Serbian practice for a court to award damages caused by intellectual property infringement, particularly design infringement. The Commercial Court’s decision may be appealed, but it appears unlikely that the decision would be overturned.

This ruling is significant because it will allow right holders to invoke it in their struggle against this type of infringement, potentially beginning to put an end to fake auto parts. There have been no rulings of this kind in Serbian practice so far and the European practice related to design infringing car parts is itself inconclusive.

By: Branislav Krnetić

For more information, please contact Branislav Krnetić at our Serbia office.

Hungary Abolishes Patent Maintenance Fees for New Patents during COVID-19 Emergency

On August 6, 2021, the Hungarian Government published Decree No. 474/2021 (VIII.6.) abolishing patent maintenance fees for the first three years of the patent protection period for national and European patents filed in Hungary on or after August 7, 2021.

This Decree will be in force during the coronavirus-related state of emergency in Hungary, i.e. until the date of expiry of Act I of 2021 on the Containment of the Coronavirus Pandemic, which will depend on the COVID-19 situation in the country.

Prepared by: Erika Farkas

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

Plant Variety Protection Term to be Extended from 25 to 30 Years for Certain Plants

On September 13, the EU Parliament voted to approve the proposal for a Regulation of the European Parliament and of the Council to extend the term of Community plant variety rights for the species asparagus and the species groups flower bulbs, woody small fruits and woody ornamentals, from 25 to 30 years.

The EU Parliament adopted the proposal at the first reading and has further referred it to the EU Council for the final word on the eventual extension. If adopted, the Regulation will be published in the Official Journal of the European Union and it will enter into force 20 days after publication.

The extension request was made by the Administrative Council of the Community Plant Variety Office (CPVO) following requests coming from plant breeders represented by the breeders’ organisations including CIOPORA and Euroseeds.

Certain plant varieties are allowed a longer protection term because they typically take longer to grow and are generally more difficult to cultivate. If the 5-year extension is granted for the species asparagus and the species groups flower bulbs, woody small fruits and woody ornamentals, plant breeders will have more time to recoup their investment.

Prepared by: Gergana Aleksandrova and Dimitar Batakliev

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

Kazakh Officials Detain Fake Food Products

Department of Justice officials in the city Shymkent, southern Kazakhstan, recently detained over 5,000 packs of baking powder infringing the Polish Cykoria® trademark and 8,000 packs of powdered milk infringing the Korean Frima® trademark.

The counterfeits, estimated to be worth approximately EUR 34,000 (USD 40,000), were detained during the inspection of a manufacturing warehouse in the city of Shymkent, and will be destroyed. This case was initiated when the right holders detected the counterfeits on the local market and reported it to the Department of Justice.

Prepared by: Diliya Chanysheva

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