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2022

IP News Eastern Europe

March 2022

IP NEWS

Important Notice Concerning Deadlines in IP Matters before the Ukrainian IPO

At this point in time it is not yet 100% clear how missing a deadline before the Ukrainian IPO will be treated while martial law is in effect. While waiting for the new Law on Protection of Interests of IP Owners (in Ukraine) during Martial Law to enter into force (the law was recently approved and should soon be signed and published) we wanted to draw your attention to a few relevant points.

Martial law was introduced in Ukraine on February 24, 2022 for the term of 30 days. On March 14, 2022, martial law was extended for further 30 days.

According to the notice posted on March 1, 2022 on its official website, the Ukrainian IPO continues to operate on a full-time basis to ensure uninterrupted functioning of the intellectual property system in the country.

On March 21, Ukrainian PTO published an update on the peculiarities of IP protection under martial law. As mentioned in this update, according to Section 2, Article 14-1 of the Ukrainian Law "On Chambers of Commerce and Industry of Ukraine", force majeure circumstances are the extraordinary and unavoidable circumstances that objectively prevent one from fulfilling the obligations arising from provisions of legislative and other regulatory acts, and include the threat of war, armed conflict or a serious threat of such conflict, including but not limited to enemy attacks, blockades, military embargoes, actions of a foreign enemy, general military mobilization, military actions, declared and undeclared war, etc.

Given the aforesaid, the Ukrainian IPO stated that, as far as missed deadlines are concerned, under the martial law introduced in Ukraine, the provisions of the above mentioned law may apply to applicants and holders residing or domiciled in Ukraine.

Whereas Ukrainian IPO confirms that martial law will qualify as force majeure, it does so only in respect of “applicants and right holders residing or domiciled in Ukraine”. Therefore, while it is relatively safe to assume that a deadline missed during war time can be reinstated later, applicants and IP owners are advised to follow the “normal” course of action when it comes to Ukraine, because the IPO is operational and foreign IP owners are not explicitly mentioned in the most recent Ukrainian IPO announcement. In addition, it is understood that all deadlines will continue (presumably counting from the moment of interruption, on February 24, 2022) once the martial law regime is lifted.

The new law (mentioned above and expected to enter into force within the next 10 days or so) will resolve this issue and will clarify the question of validity of IP rights during the martial law. It is expected that a period of 90 days following the cessation of martial law regime will be allowed to regulate the situation IP owners find themselves in at the moment of the mentioned cessation.

For any questions, please contact operations@petosevic.com.

Uzbekistan Adopts Law on Geographical Indications

Uzbekistan’s first Law on Geographical Indications was adopted on December 21, 2021 and entered into force on March 3, 2022, introducing the rules and grounds for registration and use of geographical indications (GIs).

The law defines a GI as a designation which identifies the goods as originating from a certain geographical area, if their quality, reputation and other characteristics can be essentially attributed to their geographical origin. Unlike appellations of origin (AOs), for which all product stages should take place in the specified geographical location, for GIs it is acceptable that at least one stage of production, which substantially influences the quality, reputation or characteristics of the product, takes place on the territory in question.

While the Law on Trademarks, Service Marks and Appellations of Origin provides for the registration and use of AOs, the new GI law provides for the registration of new GIs and the registration of the right to use the existing GIs. The GI law also provides for the registration of foreign GIs – the procedure is the same as for national GIs.

The applicant may be a group of natural and/or legal persons (the applicant may also be one person, if there are no other applicants or if other applicants do not express a desire to apply) located in a certain geographical area whose name is used to designate the product they produce. The applicant may also be a non-governmental organization or local executive body located in that area.

The application for the registration of a GI or the right to use an existing GI should be filed with the Uzbek Intellectual Property Office and must contain the following:

  1. Representation/image of the claimed designation;
  2. Product description;
  3. The production location within the geographical area;
  4. Description of specific product characteristics and its link with the production area, climate, craft, etc.;
  5. Names and locations of competent inspection bodies or laboratories certifying the product’s compliance with the declared, specific characteristics, if provided for in the administrative instructions of the state service for GI registration;
  6. Proof of payment of the official fee; approximately EUR 510 (USD 570);
  7. Documents confirming that the applicant is located in a certain geographical area and that the applicant produces the goods with characteristics essentially linked to that geographical area, if the applicant’s production is based in Uzbekistan;
  8. Documents confirming the applicant’s right to use the GI in the country of origin, if the applicant’s production is based outside of Uzbekistan;
  9. In case of collective filing, a document confirming the applicable characteristics of the product being produced;
  10. For applicants claiming the right to use a registered GI, documents confirming that the applicant is a manufacturer of goods with the characteristics declared in the IPO’s registry.

While new GI registrations are valid for an unlimited period of time, certificates granting the right to use the already registered GIs are valid for 10 years from the application filing date, and can be extended for an unlimited number of additional 10-year periods.

The GI registration process takes less than two months. Formal examination is carried out within 15 days from the application filing date and substantive examination within one month from the formal examination decision date.

During substantive examination, the IPO does not only check if the claimed designation is in conflict with registered AOs and GIs, but also if it is in conflict with registered trademarks, service marks, plant varieties, animal breeds or any mark which could cause public confusion regarding the product and its origin. Interested parties can therefore invalidate a GI registration based on both absolute and relative grounds.

Registration of a GI or of a right to use a GI does not grant exclusive rights. It is worth mentioning that the GI law has no provisions regarding penalties for the breach of the law. In contrast, the Law on Trademarks, Service Marks and Appellations of Origin includes monetary fines ranging from EUR 2,130 (USD 2,370) to EUR 4,255 (USD 4,737).

As of today, the Uzbek IPO online registry includes four active AO registrations. Following the adoption of the new GI law, it is expected that more geographically related signs and names will be registered, as the GI registration procedure is less time consuming and less rigid regarding the place of production requirement.

By: Umida Solijonova

For more information, please contact Umida Solijonova at our Uzbekistan office.

Hungary Amends SPC Regulations

Amendments to Hungary’s Decree 26/2004 (II.26.) on the rules necessary for the implementation of the European Community Regulations concerning the creation of supplementary protection for certain products entered into force on March 1, 2022, introducing important changes relating to Supplementary Protection Certificates (SPCs).

SPC Manufacturing Waiver

The amendments harmonize Hungarian legislation with EU Regulation 2019/933, enabling companies in Hungary to produce a generic or biosimilar version of an SPC-protected medicine during the SPC term, for the purpose of:

  • Exporting to countries where SPC protection is not available or not enforceable; or
  • Stockpiling during the final six months of the SPC term in order to place the product on the EU market once the SPC expires.


SPC Term Recalculation

The Hungarian Intellectual Property Office now allows SPC holders to request recalculation of their SPC duration, based on the judgment of the Court of Justice of the European Union (CJEU) in case C-492/16 (Incyte Corporation) from December 2017. In this case, the CJEU stated that its decision in case C-471/14 (Seattle Genetics) from October 2015 had retroactive effect. In the Seattle Genetics case, the CJEU was asked how “the date of the first authorization to place the product on the market” in Article 13(1) of the SPC Regulation should be interpreted, considering that a marketing authorization had two dates:

  • The date of the decision granting the marketing authorization; and
  • The date the applicant is notified of the marketing authorization approval.

The CJEU decided that the date to be used should be the notification date, meaning that the duration of SPC applications following the Seattle Genetics judgement should be calculated on the basis of the marketing authorization notification date.

After this case, certain national intellectual property offices in the EU allowed holders to request the recalculation of the duration of SPCs granted before October 2015. Other offices, including the Hungarian IPO, refused to accept retroactive recalculation requests. With the new amendments of Decree 26/2004 (II.26.), the Hungarian IPO will now accept such requests.

SPC Application Amendments

The SPC application can be now amended to cover a different product or different marketing authorization than the one indicated when the application was first filed. It will still not be possible to amend the application so that the SPC relates to a basic patent other than the one originally designated. Detailed transitional rules determine to which SPC cases the new rules apply, depending on the date of application, grant or entry into force.

Prepared by:
Balázs Csányi and Erika Farkas

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

Kazakhstan Amends Official Language Legislation

Legislative amendments concerning the status and use of two official languages in Kazakhstan, Kazakh and Russian, entered into force on January 11, 2022.

Amendments to the Law on Languages

Under the recent amendments, signboards of privately owned companies and organizations, as well as their announcements, advertisements, forms, price lists, price tags, menus, signs and other visual information no longer need to be in both Kazakh and Russian languages. They now need to be in Kazakh only, but may also be in Russian and/or other languages if this is necessary under certain circumstances. Trademarks protected in Kazakhstan which are used in signboards of non-governmental organizations should remain unchanged and do not need to be translated.

Amendments to the Law on Public Health and Healthcare System

While language requirements were not previously defined, it is now mandatory to use both Kazakh and Russian languages on:

  • Labels applied to medication packaging and on the document that provides information about the medicine and its use; and
  • Labels applied either directly to medical products or to their packaging and on instructions for their use (this applies to any instruments, devices, equipment, materials and other items used in medical facilities).

Amendments to the Law on Advertising

It is no longer mandatory to distribute advertisements in both Kazakh and Russian, but only in Kazakh, while the ads may also be in Russian and/or other languages at the discretion of the advertiser. This rule does not apply to the ads in printed publications, on the Internet and those used by news agencies, which must be in both official languages.

Prepared by: Malika Bexultan

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

Hungarian IPO Clarifies Deadline Extensions in Trademark Procedures

The Hungarian Intellectual Property Office has recently published an announcement clarifying deadline extensions in trademark procedures.

According to the Hungarian Trademark Act, there are two types of deadlines in trademark proceedings before the Hungarian IPO – the deadlines defined by law and the deadlines defined by the IPO. The deadlines defined by law cannot be extended, and failure to meet them results in legal consequences without warning.

While the Trademark Act does not set a deadline for the submission of declarations or responses to Office Actions relating to application deficiencies, the IPO must give the applicant a deadline of at least 30 days, which may be extended upon request before the deadline expires and upon payment of an official fee. If the deadline is missed and a deadline extension request is not filed, the legal consequences of the failure to comply with the deadline set out in the Office Action will become effective. Applicants may request up to three one-month extensions or one three-month extension without the need to support the request with evidence.

Deadline extensions for more than three months may be granted only in particularly justified cases. Applicants may submit such extension requests after having been granted a three-month extension, or they may request such an extension in their first request. In both of these cases, applicants must submit evidence justifying a further extension. When dealing with such requests, the IPO will take into account the type of trademark proceedings, the subject of the request and the particular circumstances of the case. For example, the IPO will look at whether the extension is being requested in an ex parte or inter partes case, since in inter partes cases the interests of the adverse party may be prejudiced by a prolonged proceeding caused by deadline extensions.

The subject of the request – deficiency or declaration – should also be considered, as certain submissions (e.g. evidence of good reputation or evidence of acquired distinctiveness) may take longer to prepare than simpler statements. The IPO may also consider the applicant’s circumstances, such as communication or administrative difficulties due to their location abroad. Besides granting or rejecting an extension request, the IPO may also grant the extension for a shorter period of time than the one requested, if the applicant justifies their request but the IPO finds the arguments and evidence not well grounded.

Prepared by: Erika Farkas

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

Serbian Customs Detain Fake Apparel, Footwear, Accessories, Labels

On February 27 and 28, 2022, Serbian customs officials at the Gradina border crossing point with Bulgaria detained apparel, footwear, accessories and labels believed to infringe numerous trademarks, including Prada®, Armani®, Moncler®, Dolce & Gabanna®, Adidas®, Nike®, Puma®, Valentino®, Louis Vuitton® and Boss®.

The goods, estimated to be worth approximately EUR 6,500 (USD 7,250), as well as around 30 kg of labels, were detained during the inspection of two trucks arriving from Turkey.

Prepared by: Djurdja Krivokapić

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

COMPANY NEWS

PETOŠEVIĆ Highly Ranked in Chambers & Partners Guide

The 2022 Chambers & Partners Guide for Europe, one of the top publications on legal industry rankings, recently recognized PETOŠEVIĆ offices and practitioners in three jurisdictions.

PETOŠEVIĆ was ranked as follows:

Serbia — Intellectual Property — Band 1
North Macedonia — Intellectual Property — Spotlight Table

Regional Manager for Western Balkans Mihajlo Zatezalo was recognized as an Eminent Practitioner in Serbia, while Croatia Head of Office Ivan Kos was ranked in Band 3 in Croatia.

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

PETOŠEVIĆ Highly Ranked by WTR 1000

World Trademark Review has recently published its annual WTR 1000 directory identifying the world’s leading trademark professionals. Seven PETOŠEVIĆ offices and 15 practitioners have been recognized in the 2022 edition.

Our offices have been ranked as follows:

Albania — Recommended as one of the top IP firms
Bulgaria — Silver band
Croatia — Gold band
Romania — Enforcement and Litigation – Silver band; Prosecution and Strategy – Silver band
Serbia — Gold band
Slovenia — Silver band
Ukraine — Silver band

PETOŠEVIĆ practitioners recognized by WTR 1000 are Predrag Anokić, Dimitar Batakliev, Aura Campeanu, Balázs Csányi, George Irimescu, Yuriy Karlash, Oleh Karpenko, Ivan Kos, Vladimir Nika, Dina Petošević, Slobodan Petošević, Anamarija Stančić Petrović, Natalia Stetsenko, Mihajlo Zatezalo and Mirjana Živković.

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

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