Kosovo Adopts New Laws on Patents, Designs, Semiconductor Topographies
The new patent and industrial design laws entered into force in Kosovo on February 4 and February 5, 2022, respectively, while the new law on the protection of semiconductor topographies entered into force on January 17, 2022.
An important change brought by the new Law on Patents relates to supplementary protection certificates (SPCs). While the previous law included provisions related to SPCs, they never entered into force because they were subject to Kosovo’s potential EU membership. Under the new law, the SPC provisions are not subject to Kosovo’s eventual EU accession. The SPC chapter includes provisions regarding the SPC subject matter, examination and application processes, exceptions to SPC rights and conditions for obtaining and invalidating an SPC.
Exhaustion of patent rights remains national. However, the new patent law provides that rights may be exhausted if the patented product is placed on the market by the right holder or with their consent, therefore opening a possibility for the courts to interpret a possible implicit consent by the right holder.
The new law also clarifies the restoration and continuation procedures, which were sometimes found ambiguous.
The new Law on Semiconductor Topographies clarifies the subject matter for the protection of semiconductor topographies as well as the exclusive rights and limitations granted by such protection.
The exclusive rights start either on the date when the topography is first commercially exploited anywhere in the world (provided that the application for the topography registration is submitted within two years from that date) or on the date the application for the topography registration is submitted to the local IPO. The rights are valid for ten years counting from the year following the end of the calendar year in which they were established.
The exhaustion of rights has been introduced – once any protected topography or any semiconductor product produced using the protected topography is placed on the Kosovo market by the right holder or with their consent, the rights are exhausted.
The protection of trade secrets for semiconductors has also been introduced – the applicant can now label any required material or its part as a trade or business secret, but this right cannot be exercised for more than half of the number of layers in the semiconductor product. The registration and invalidity procedures have also been thoroughly clarified.
The substantive and procedural provisions of the new Law on Industrial Designs remain the same as before. The changes introduced by the new law relate to enforcement and are identical to the new enforcement provisions in the new patent and semiconductor topography laws. Although the three laws are separate, the intention was to harmonize their enforcement chapters.
The main changes relating to enforcement in all three new laws are the following:
- The time frame to file an appeal against the local IPO decision changed from 15 days to 30 days from the date of receipt of the decision;
- Under certain circumstances, the court may replace an order for the seizure and destruction of infringing goods with the monetary compensation for the injured party;
- Provisions regarding the right to information and evidence have been redefined in favour of right holders – they are now entitled to receive more information if their requests are justified;
- 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 of the infringer and, where appropriate, other elements such as economic factors and the moral prejudice caused to the right holder;
- The new laws include several provisions which were previously covered by the Law on Contested Procedure, such as ordering the placement of security for damages, or, in case the injunction is revoked or expires due to any act or omission by the right holder, or if no infringement is found, ordering the plaintiff to provide adequate compensation for any damage caused by these measures;
- In line with the EU Enforcement Directive, the new laws provide that injunctions in infringement cases should be fair, equitable, proportionate and affordable;
- With the aim of reducing the scale of infringement, the punitive provisions introduced higher penalty amounts.
In addition, new patent and design laws now include provisions clarifying the time frames for initiating proceedings with the court. Infringement claims, claims relating to the seizure and destruction of goods, as well as 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.
Uzbekistan Introduces Monetary Fines for IPR Infringement
On February 3, 2022, Uzbekistan adopted amendments to the Law on Trademarks, Service Marks and Appellations of Origin; the Law on Company Names; and the Law on Inventions, Utility Models and Industrial Designs. Under the amendments, which enter into force on May 4, 2022, legal entities can be fined between 2,200 EUR (2,890 USD) and 4,400 EUR (4,970 USD) for infringing these IP rights.
Following a right holder’s complaint, the Uzbek IPO will conduct an inspection of legal entities reported as infringers, after obtaining approval from the Representative for the Protection of Rights and Legal Interests of Business Entities under the President of Uzbekistan (the Business Ombudsman). The IPO officials will then prepare an official report on the offense identified during the investigation. If the infringer or their representative refuses to sign the report, the IPO officials will have to confirm this by means of a video or by the testimony of two witnesses.
Within five working days from the date the report is issued, the IPO will make a decision on the monetary fine and send this decision to the infringer within one working day. If the infringer pays 70% of the total fine amount within one month from the date the decision to impose a fine was sent, they will be exempted from paying the remaining amount. In case of non-voluntary payment, the IPO will make a court claim for the payment within five working days. The infringer has the right to appeal the IPO's decision to impose a fine before an administrative court.
It remains to be seen how well the new measures will work in practice. The requirement for the IPO to obtain approval to conduct inspections and the possibility for the infringer to appeal the IPO’s decision before the court may draw out the process – it may take up to two years to reach the final court ruling. Moreover, the amendments do not provide for the seizure and destruction of infringing goods.
By: Djakhangir Aripov and Zumrad Ergasheva
For more information, please contact Djakhangir Aripov at our Uzbekistan office.
Romanian Customs Detain EUR 2.3 Million Worth of Fake Earphones
On January 20, 2022, Romanian customs officials at the port of Constanta in eastern Romania detained 11,440 wireless and 1,000 wired earphones believed to infringe the Apple® trademark.
The goods, estimated to be worth approximately EUR 2.3 million (USD 2.6 million), were discovered during the inspection of a container arriving from China.
Prepared by: Bogdan Neagoe
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Serbian Customs Detain Fake Mobile Phones in Transit
On January 31, 2022, Serbian customs officials detained 630 mobile phones believed to infringe the iPhone®, Samsung®, Nokia® and Redmi Note® trademarks.
The goods, which were discovered during the inspection of a customs warehouse, were in transit – the shipment originated in Dubai and was intended to reach an importer in Podgorica, the capital of Montenegro.
Prepared by: Djurdja Krivokapić
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Hungarian Officials Detain Fake Perfumes
The Hungarian National Tax and Customs Administration (NTCA) officials in Győr-Moson-Sopron county in northwestern Hungary recently detained 210 bottles of perfume infringing several trademarks, including Hugo Boss®, Calvin Klein® and Chanel®.
The goods, estimated to be worth approximately EUR 5,800 (USD 6,600), were discovered during the inspection of the apartment belonging to a man who sold the counterfeit perfumes using a popular social networking site. The NTCA officials noticed an online post advertising perfumes at low prices and ordered 11 of them. The infringement was confirmed upon delivery.
Prepared by: Erika Farkas
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