PETOŠEVIĆ

October 2021

Uzbekistan Amends Trademark and Copyright Laws

On August 20, 2021, Uzbekistan adopted amendments to the Law on Trademarks, Service Marks and Appellations of Origin and the Law on Copyright and Related Rights. The amendments, which entered into force on August 21, 2021, introduced several important novelties.

One of the novelties is the introduction of the expedited examination of tra­­demark applications, which should be completed within one month from the formal examination decision date. Expedited examination is an alternative to the regular substantive examination, which takes between six and seven months. An applicant may file a request for expedited examination together with the trademark application or within three months from the application filing date. For an application to undergo expedited examination, the applicant has to order a trademark availability search, which takes 10 days and is subject to payment of a separate service fee, ranging from approximately USD 200 to USD 300 per trademark for one class, depending on the type of mark. The Uzbek Intellectual Property Office is not limited to running the availability search only among existing trademark applications and registrations, but can also include other available or well-known information that may serve as an obstacle for trademark registration. It is uncertain whether the cited trademark-related information retrieved from the Internet can be treated as well-known or whether it should simply be treated as publicly available.

The amendments also introduced third-party observations into the trademark law. The IPO is required to publish information on new trademark filings on its official website within one working day from the application filing date, and interested parties may then submit written observations against filed applications.

The amendments also stipulate exclusive trademark rights starting from the registration date. Information about a trademark registration will be recorded in the IPO’s register and published on the IPO’s website on the date of trademark registration. Previously it was unclear whether trademark rights started on the date of publication or on the date of registration. These two dates were different – publication usually took place at the end of each month, while registration took place three days after the payment of registration fees.

Under the copyright law amendments, duration of copyright changed from 50 to 70 years after the author’s or the last co-author’s death. The amended copyright law also stipulates a fine for breaching copyright law ranging from USD 540 to USD 27,000 depending on the severity of the infringement.

While the amendments are not substantive, they represent a step forward in following the principles and rules set forth in the TRIPS Agreement as part of Uzbekistan’s aspirations to join the WTO.

By: Umida Solijonova

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

Serbian Court Issues Interesting Decision in UGG Boots Case

PETOŠEVIĆ Serbia recently represented Serbian footwear retailer Obuća Metro in a lawsuit filed against them by the U.S. footwear distributor Deckers Outdoor Corporation, the owner of the UGG brand.

On December 31, 2019, Serbian market inspectorate officials detained 38 pairs of boots imported by Obuća Metro suspected of infringing the intellectual property rights of Deckers Outdoor Corporation and its UGG brand.

Initially, an attempt was made to settle the matter out of court, but eventually Deckers filed a lawsuit with the Commercial Court in Belgrade on February 10, 2020 and requested a preliminary injunction (detention of goods until the end of the proceedings). At the same time, we requested that the preliminary injunction and the lawsuit be dismissed as legally unfounded.

Because Deckers does not have registered design rights for its UGG boots in Serbia, the lawsuit was based on copyright infringement of the UGG boot design drawing in the company’s design registration valid in the EU and the US. We argued that Deckers did not prove that the author of the drawing transferred the copyright to the company. We also gave an example of Emu Ridge Holdings Pty LTD, an Australian company that produces boots similar to UGG boots, arguing that copyright cannot be claimed in this case.

The Commercial Court dismissed the preliminary injunction. Deckers appealed this decision but the appeal was also dismissed. The U.S. company then requested another preliminary injunction, which the court again dismissed. On September 9, 2021, the court finally dismissed the lawsuit as legally unfounded. The Commercial Court’s decision was appealed, but it appears unlikely that the decision will be overturned.

This case is interesting because it illustrates and emphasizes the need to register designs in order to be able to claim infringement.

By: Branislav Krnetić

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

Slovenia Ratifies UPC Provisional Application Protocol

On October 15, 2021, Slovenia deposited its instrument of ratification of the Protocol on Provisional Application (PPA) of the Unified Patent Court (UPC) Agreement and of the UPC Agreement itself.

The PPA will allow some parts of the UPC Agreement and the UPC Statute to be applied provisionally. It is one of the documents required to prepare the structural, organizational and financial functioning of the UPC.

Following Slovenia’s recent ratification and Germany’s ratification of the PPA Protocol on September 27, 2021, only one more signatory state needs to ratify or make a declaration with respect to the PPA for it to enter into force.

The UPC will be a court common to the contracting states and thus part of their judicial system, with exclusive competence with regard to European patents and patents with unitary effect. The exclusive competence is however subject to exceptions during the transitional period. The UPC's rulings will have effect in the territory of those contracting states having ratified the UPC Agreement at the given time. The UPC will not have any competence with regard to national patents. The UPC Agreement is open to accession by any EU member state. Up to date, all EU member states except Spain and Poland have signed the Agreement.

Prepared by: Djurdja Krivokapić

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

Hungarian Customs Detain Fake Perfumes, Electronics

The Hungarian National Tax and Customs Administration officials recently detained 230 headphones, chargers and speakers, and 1,500 labels infringing the JBL® trademark, as well as over 3,000 bottles of perfume infringing numerous trademarks, including Chanel®, Gucci®, Hugo Boss®, Dior® and Giorgio Armani®.

The goods were discovered during the inspection of a shop in the capital of Budapest and are estimated to be worth approximately EUR 133,000 (USD 154,000).

Prepared by: Erika Farkas

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

Serbian Customs Detain Fake Apparel, Perfumes, Cigars

On four separate occasions between September 27 and October 25, 2021, Serbian customs officials detained apparel, perfumes and cigars believed to infringe various well-known trademarks.

First, customs officials at the Nikola Tesla airport in the capital of Belgrade detained four suitcases filled with Cuban cigars believed to infringe several trademarks, including Cohiba®. The suitcases with the cigars were carried by a traveler arriving from Cuba.

Then, on two separate occasions during the same day, customs officials detained 60 puffer jackets believed to infringe the Nike® trademark and 135 pairs of jeans believed to infringe several trademarks, including Diesel® and Dsquared2®. The goods were discovered during the inspection of two cars on a highway in central Serbia.

Finaly, customs officals on the Gradina border crossing point with Bulgaria detained nearly 150 bottles of perfume believed to infringe numerous trademakrs, including Yves Saint Laurent®, Dior® and Carolina Herrera®. The goods were discovered during the inspection of a car traveling from Bulgaria to Serbia.

Prepared by: Djurdja Krivokapić

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

Three PETOŠEVIĆ Lawyers Participating in Virtual INTA Annual Meeting

PETOŠEVIĆ will be participating in INTA's virtual annual meeting taking place on November 15-19, 2021.

The team representing us this year is:

Slobodan Petošević — Group Executive Chairman and CEO

Mayya Pak – Associate, PETOŠEVIĆ Russia

Ivan Matić – Senior Associate, PETOŠEVIĆ Serbia

We will take part in online committee meetings and various educational and networking sessions, so we hope we’ll have a chance to chat with you during these events.

While we will not meet face-to-face, the team of lawyers at PETOŠEVIĆ that handles your IPR protection would be happy to schedule a video meeting to discuss the most recent developments and IP matters that you may have in any of the jurisdictions in which we operate.

To schedule a video call, email our marketing department or anyone at PETOŠEVIĆ you regularly communicate with, and indicate your availability, as well as the discussion topics, people and countries of interest.

We hope to chat with you soon!

PETOŠEVIĆ Team

17 PETOŠEVIĆ People on INTA Committees for 2022-2023, George Irimescu Chair of International Classification Subcommittee

We are pleased to announce that 17 people from 8 PETOŠEVIĆ offices will be serving on INTA committees during the 2022-2023 term. We strive to be active INTA members and are thrilled that this will be reflected in our committee presence over the next two years.

PETOŠEVIĆ Romania Associate George Irimescu has been appointed Chair of the International Classification Subcommittee of the Harmonization of Trademark Law and Practice Committee, the mission of which is to review and monitor amendments of existing laws, regulations, and trademark practices concerning the classification of goods and services.

Below is a list of our INTA committee members:

1. Maxim Hristov – Bulgaria – Harmonization of Trademark Law and Practice Committee

2. Maria Kolarska – Bulgaria – Geographical Indications Committee

3. Diliya Chanysheva – Kazakhstan – Trademark Office Practices Committee

4. Aliya Madiyarova – Kazakhstan – Building Bridges Committee

5. Slobodan Petošević – Luxembourg – Unfair Competition Committee

6. Živka Kostovska Stojkovska – North Macedonia – Alternative Dispute Resolution Committee

7. George Irimescu – Romania – Harmonization of Trademark Law and Practice Committee

8. Mara Marinescu – Romania – Anticounterfeiting Committee

9. Mayya Pak – Russia – Enforcement Committee

10. Predrag Anokić – Serbia – Internet Committee

11. Ivan Matić – Serbia – Anticounterfeiting Committee

12. Igor Alfiorov – Ukraine – Legislation and Regulation Committee

13. Oleh Karpenko – Ukraine – Anticounterfeiting Committee

14. Ostap Khomyn – Ukraine – Emerging Issues Committee

15. Marina Maltykh – Ukraine – INTA Bulletins Committee

16. Viktoriia Smyrnova – Ukraine – Trademark Office Practices Committee

17. Natalia Stetsenko – Ukraine – Indigenous Rights Committee

Who’s Who Legal Recognizes Four PETOŠEVIĆ Practitioners

The Who’s Who Legal 2021 edition was recently published recognizing four PETOŠEVIĆ practitioners:

Aura Campeanu, Head of Office – Romania – Global Leader,  Recommended for Trademarks

Slobodan Petošević, Group Executive Chairman and CEO – Global Leader,  Recommended for Trademarks

Anamarija Stančić Petrović, PETOŠEVIĆ Brussels Representative – Global Leader,  Recommended for Trademarks and Copyright

Mihajlo Zatezalo, Regional Manager – Western Balkans – Global Leader,  Recommended for Trademarks

Who’s Who Legal is a widely recognized organization that identifies world’s leading legal professionals from over 150 jurisdictions in multiple areas of business law.

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

Djakhangir Aripov Presents at WIPO's Workshop on IP for Women Entrepreneurs from Indigenous Peoples and Local Communities

On October 11 and 12, 2021, PETOŠEVIĆ Uzbekistan Head of Office Djakhangir Aripov spoke about the basics of intellectual property law during the Virtual Practical Workshop on Intellectual Property for Women Entrepreneurs from Indigenous Peoples and Local Communities, organized by the World Intellectual Property Organization (WIPO) in cooperation with the International Labour Organization (ILO), the International Trade Centre (ITC) and the International Trademark Association (INTA). Mr. Aripov also facilitated group exercises focused on IP, branding and market access.

The practical workshop, which took place online from October 11 to 22, welcomed 23 women entrepreneurs as part of the first of two events under the Training, Mentoring and Matchmaking Program on Intellectual Property for Women Entrepreneurs from Indigenous Peoples and Local Communities, offered by WIPO’s Traditional Knowledge Division. The participants learned and exchanged ideas on the strategic and effective use of IP and other relevant tools in support of their businesses and initiatives and to the benefit of their communities.

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

Natalia Osipenko Presents during LES 2021 Annual Meeting

On September 28, 2021, PETOŠEVIĆ Russia Patent Attorney Natalia Osipenko held a presentation on licensing and protecting IP in Eurasia as part of a panel discussion during the LES 2021 Annual Meeting, which took place online during the week of September 27.

The “Licensing & Protecting IP in Russia and Eurasia: A Timely Update For Practitioners” panel discussion was sponsored by the LES Chemicals, Environment, Energy, and Materials Committee, of which Ms. Osipenko is a member. Her presentation focused on the geographic territories which are referred to when talking about licensing and protecting IP in Eurasia, on the different roles of the Eurasian Patent Organization and the Eurasian Economic Union in regional IP protection, as well as the specifics of Eurasian patents, designs and trademarks.

The LES 2021 Annual Meeting focused on reimagining the future and gaining insights on effective ways to acquire, protect, and monetize intellectual property in the post-COVID-19 age.

For more information, please contact Natalia Osipenko at our Russia office.