PETOŠEVIĆ

July 2022

New Trademark Law Enters into Force in Kosovo

Kosovo’s new Law on Trademarks, which entered into force on July 28, 2022, aims to harmonize local legislation with Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks. The law also provides a basis for the implementation of Directive 2004/48/EC on the enforcement of intellectual property rights. The new law introduced numerous changes, the most significant of which are outlined below.

Elimination of Graphical Representation Requirement

Graphical representation is no longer required when filing a trademark application, meaning that a sign can be represented in any form that distinguishes the goods or services applied for from those of other undertakings and that enables the authorities to clearly establish the scope of protection that is sought.

Literal Interpretation of Class Headings

When filing a trademark application, it is now required to precisely define the list of goods and services for which protection is sought in such a way that enables the competent authorities to determine the extent of the protection sought on that sole basis.

Additional Absolute and Relative Grounds for Refusal

The law introduced additional absolute grounds for refusal – a sign cannot be registered if there is a conflict with an existing designation of origin, geographical indication, traditional term for wine, traditional speciality guaranteed or plant variety. In terms of relative grounds for refusal, a bad faith trademark application can now be opposed.

Exhaustion of Rights

Under the new law, trademark owners cannot prohibit the importation of genuine goods bearing their trademarks after they have placed them on any of the following markets:

• Kosovo;
• A member state of the European Union;
• A member state of the European Economic Area;
• A state of the Western Balkans region;
• A state with which Kosovo has a free trade or trade facilitation agreement.

The previous version of the law provided for the national exhaustion of rights. It remains to be seen how the new exhaustion regime will be interpreted by courts, in particular with regard to cases initiated under the previous law.

Trademark Infringement Scope Expanded

The law expands the scope of trademark infringement by establishing additional uses of similar or identical signs that may be prohibited by trademark owners, namely:

• Use of a sign as a company name;
• Use of a sign in advertising; and
• Use of a sign on packaging, labels, tags and security or authenticity features or devices, and placing these on the market.

Introduction of Disclaimers

If a trademark includes an element that might not be considered distinctive, the IPO may require the applicant to impose a disclaimer on the non-distinctive element in order to register such trademark.

The Non-Use Defense

In court proceedings, the defendant may now request that the plaintiff show the use of the trademark claimed to have been infringed. The plaintiff should prove that, during the five-year period prior to the date of filing of the infringement claim, the trademark was placed on the market in respect of the goods or services for which it was registered. In the absence of such evidence, the claim will be refused. The same defense applies to preliminary injunctions.

Appeals with the Market Inspectorate

It is now possible to enforce trademarks in an administrative procedure by filing an appeal with the Market Inspectorate against an infringer. The appeal procedure will be further elaborated in bylaws, which will be adopted by July 28, 2023.

Other Changes

Other changes relating to trademark enforcement include the following:

• The time frame to file an appeal against the IPO decision changed from 15 days to 30 days from the date of receipt of the decision;
• In order to prevent the continuation of infringement, the court may order the infringer to pay the trademark holder EUR 5,000-10,000 for a single instance of infringement;
• Under certain circumstances, the court may replace an order for the seizure and destruction of infringing goods with monetary compensation for the injured party;
• The criteria for the assessment of damages have been specified – when determining the amount of damages, the court will take into account all relevant aspects such as adverse economic consequences, including lost profits incurred by the injured party, any unjust profit made by the infringer and, where appropriate, other elements such as economic factors and the moral prejudice suffered by the right holder;
• In line with the EU Enforcement Directive, the new law provides that injunctions in infringement cases should be fair, equitable, proportionate and affordable; and
• The new law also includes provisions clarifying the time frames for initiating proceedings with the court. Infringement claims, claims relating to the seizure and destruction of goods and claims for damages may be filed within three years from the date the right holder became aware of the infringement and the infringer, and no later than five years from the date the infringement occurred.

By: Mihajlo Zatezalo

For more information, please contact Mihajlo Zatezalo at our Serbia office.

Fake Apparel, Footwear, Accessories Destroyed in Montenegro

On July 4, 2022, PETOŠEVIĆ Montenegro representatives and local customs authorities witnessed the destruction of nearly 7,200 items found to infringe the Nike®, Dsquared2®, USPA®, Under Armour®, Converse® and Hermès® trademarks.

The goods, which were destroyed in the capital of Podgorica, included:

• 6,403 sportswear items, mostly tracksuits, leggings, sweatshirts, sneakers, socks, T-shirts, shorts and jerseys, infringing the Nike® trademark;
• 400 pairs of shorts infringing the USPA® trademark;
• 205 clothing items, including shorts and caps, infringing the Dsquared2® trademark;
• 68 clothing items, including tracksuits, leggings, sweatshirts, T-shirts, caps and vests, infringing the Under Armour® trademark;
• 45 items, including bags, wallets, belts and T-shirts, infringing the Hermès® trademark; and
• 52 pairs of sneakers infringing the Converse® trademark.

The destruction was carried out by a local company from Podgorica that undertakes the destruction in accordance with ecological and sanitary standards.

The counterfeits were seized during 2021 and 2022 at various customs terminals in Podgorica, Rožaje and Nikšić, and were intended for local companies. 

You can see the photos from the destruction in our [gallery](we will upload images and link to gallery on petosevic.com).

By: Jelena Radević and Mladen Čolović

For more information, please contact Mladen Čolović at our Montenegro office.

Hungarian Customs Detain Fake Apparel, Accessories

The Hungarian National Tax and Customs Administration officials recently detained 7,500 clothing items and accessories believed to infringe numerous trademarks, including Adidas®, Armani®, Chanel®, Christian Dior®, Gucci® and Prada®.

The goods, estimated to be worth approximately EUR 314,000 (USD 320,000), were discovered during the inspection of a vehicle near the city of Győr on the M1 motorway in north-western Hungary.

Prepared by: Erika Farkas

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

IAM Patent 1000 Ranks PETOŠEVIĆ Offices and Professionals for Excellent Patent Work

The IAM Patent 1000 – The World’s Leading Patent Professionals 2022 rankings were recently published, recognizing PETOŠEVIĆ offices and practitioners in two jurisdictions.

The IAM Patent 1000 is published by IAM, a leading IP business information provider and the sister publication of the World Trademark Review. Banding includes Gold, Silver, and Bronze bands or just a Recommendation without a band in some countries.

PETOŠEVIĆ was ranked as follows:

Ukraine – Silver band

Romania – Highly recommended for Patent Prosecution
 

The guide shined a spotlight on three PETOŠEVIĆ practitioners for excellent patent work:

Dina Petošević – Silver band

Taras Manolov – Bronze band
Aura Campeanu – Recommended Individual
 

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

The Patent Lawyer Magazine Ranks PETOŠEVIĆ in Three Countries

The Patent Lawyer Law Firm Rankings for Europe and the UK were recently published, listing PETOŠEVIĆ among the top 10 law firms in Bulgaria, Romania and Ukraine.

The Patent Lawyer Law Firm Rankings are published by the Patent Lawyer Magazine, a leading intellectual property law publication focused on patent law. The rankings highlight 10 leading firms in the patent field in each jurisdiction based on the research carried out by the magazine in order to recognize the hard work and progress that these firms have achieved.

For more information, please visit our Rankings page.