IP News Eastern Europe

Amended Albanian Criminal Code Treats IP Infringement as Criminal Offense

2012-04-26T11:04:00+00:00

The amendments to the Albanian Criminal Code entered into force on April 11, 2012. Before the amendments, the Criminal Code did not contain any provisions concerning intellectual property protection. New provisions dealing with fines and penalties applicable in case of IP rights infringement have been added.

]]>Namely, in case of producing, using, releasing, distributing, trading, importing or exporting:

A product or a process protected by a patent
A product protected by an industrial design
Goods and/or services protected by a mark
A product that derives from its place of origin
Integrated circuit topography product

deliberately and without the consent of the IP rights holder constitutes a criminal offense, for which the law prescribes a fine or a penalty of up to one year in prison.

If the infringement is done in collaboration with another party and more than once, the law prescribes a fine or a penalty of up to two years in prison.

Author: Melina Nika

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

Source: Albanian government website

Ukraine Clarifies Practice Regarding Trademarks Containing INNs

2012-04-26T11:01:31+00:00

Celgene Corporation, a multinational biopharmaceutical company based in the United States, applied for an international registration for the word mark THALIDOMIDE CELGENE, for goods in Class 5 (pharmaceutical preparations used to treat cancers and immune-related diseases), extending the registration to Ukraine, among other countries. (IR No. 982991, registered Oct. 23, 2008.)

]]>On October 29, 2009, the Ukrainian IPO issued a provisional refusal of the registration, claiming that the applied-for trademark consists exclusively of signs that are commonly used as the signs for goods and services of a certain kind. The Ukrainian PTO based its decision on Article 6, p. 2 of the Law on Protection of Rights to Marks for Goods and Services, Dec. 15, 1993, as amended, which provides that legal protection shall not be granted for marks that consist exclusively of marks that are commonly used as the marks of goods and services of a certain kind.

On July 26, 2010, Celgene, through its representative, filed a response to the provisional refusal. As one of the arguments in support of registration, Celgene pointed out that it owns an International Registration for the mark CELGENE (covering goods in Class 5) which is valid and widely used in the countries of the European Economic Area, the United States, Ukraine, Russia, and other jurisdictions. Celgene explained that it was interested in protecting the applied-for trademark THALIDOMIDE CELGENE in order to distinguish its products from the products of other manufacturers of thalidomide and to protect itself from possible counterfeits. It emphasized that it had no intention to obtain an exclusive right to use THALIDOMIDE as a trademark.

In order to overcome the refusal, Celgene also decided to limit the list of goods to “pharmaceutical preparations containing thalidomide used to treat cancers and immune related diseases,” thus confirming its intent to cover only pharmaceutical preparations containing thalidomide with the trademark THALIDOMIDE CELGENE. In addition, Celgene submitted the evidence of registration of THALIDOMIDE CELGENE with a disclaimer of THALIDOMIDE in other jurisdictions, including the United States, Great Britain, Norway, Ireland, Switzerland, Benelux, Australia, Turkey, Hungary, etc.

Furthermore, Celgene’s representative turned the attention of the Examiner to the provision of the Guidelines on the Use of International Nonproprietary Names (INNs) for Pharmaceutical Substances and Resolution WHA46.19, according to which “registration of an INN together with a firm’s name is perfectly acceptable, as long as it does not prevent another manufacturer from using the same approach.” Taking into account that the CELGENE part of the trademark was indeed part of the firm’s name, it was emphasized that there was no reason why THALIDOMIDE CELGENE could not be registered with a disclaimer of THALIDOMIDE.

The examiner did not accept these arguments and upheld a provisional refusal. On October 6, 2010, Celgene filed an appeal before the Ukrainian IPO’s Appellate Board, asking that the refusal issued by the examiner be reversed based on the same arguments.

The Appellate Board accepted the arguments and ruled in favor of the THALIDOMIDE CELGENE registration for a limited list of goods with a disclaimer of THALIDOMIDE. The Board’s decision was confirmed by the order of the Ukrainian Institute of Industrial Property (No. 144-H, Dec. 30, 2010), and on January 25, 2011, the Institute sent a notification on the final decision to the WIPO.

With this decision, the previously uncertain practice of the Ukrainian Institute of Industrial Property with regard to registration of trademarks containing INNs was clarified.

Author: Dina Kryvoshei

For more information, please contact Dina Kryvoshei at our Ukraine office.

Source: Ukrainian PTO; PETOŠEVIĆ

German Pet Food Manufacturer Wins Bad Faith Trademark Case against Serbian Company

2012-04-26T10:57:41+00:00

On December 15, 2011, the Commercial Appellate Court in Belgrade, Serbia ruled against the Serbian pet food importer and producer who registered and used two trademarks belonging to its business partner, the German company Gimborn, which manufactures and distributes various brands of cat, dog and small animal food and care products. The Commercial Appellate Court thus upheld the 2010 first-instance ruling of the Commercial Court in Belgrade.

]]>In 2003, the defendant, the Serbian company, registered trademarks Gimpet (No. 49583) and Gimborn (No. 49584) with the Serbian IPO, in the same Class 31 in which the plaintiff, the German company, registered international trademarks under IR No. 591166 (Gimborn) in 1992 and IR No. 506326 (Gimpet) in 1986. The plaintiff’s marks, however, did not gain protection in Serbia until 2007, following a request for subsequent designation.

During court proceedings, the plaintiff argued that he had been using the trademarks in commerce all over the world, including the former Yugoslavia, later Serbia and Montenegro and then Serbia, to mark Class 31 products, long before the defendant’s registration of the infringing marks with the Serbian IPO in 2003. The plaintiff also argued that the defendant knew the plaintiff was using identical or highly similar marks in Serbia as the defendant started buying, importing and selling plaintiff’s products on the territory of Serbia and Montenegro in 2001. The plaintiff thus accused the defendant of intentionally taking unfair advantage of the reputation of the trademarks.

Even though the plaintiff’s trademarks were entitled to protection within Article 6bis of the Paris Convention for Protection of Industrial Property (well-known marks), the plaintiff refrained from providing evidence for determining whether the marks are well known, as the plaintiff believed the legal basis for the case is contained in Article 66 of the local trademark law.

The defendant argued that he had been producing his own pet food with brand names Gimborn and Gimpet since 1993. He emphasized that the plaintiff’s trademarks were not registered and protected on the territory of Serbia in 2003, when the Serbian IPO granted him the registrations. The defendant also challenged the plaintiff’s argument according to which the defendant wanted to take advantage of the plaintiff’s reputation, by claiming that in Serbia very few pet owners feed their pets industrially prepared pet food. The defendant stressed that the plaintiff did not show that the marks are well known.

The court took into consideration the similarities between the goods involved, the similarity of the marks as well as the correspondence the two parties exchanged in the period 2001-2004, which proved that the parties were involved in a business relationship when the defendant filed an application for the registration of the two marks in 2003. The court therefore ruled that the defendant knew about the existence of the plaintiff’s marks and that the defendant registered them and used them in bad faith. The court ordered the defendant to pay the plaintiff’s lawsuit fees in the amount of approximately EUR 1,500 (USD 2,000).

The court based its decision on Article 66 of Serbia and Montenegro’s Law on Trademarks (Official Gazette No. 61/2004 and 7/2005) which states that if a trademark is filed in bad faith, the rightful owner can ask for the mark to be transferred into his/her name.

On April 27, 2010, the defendant filed an appeal with the Commercial Appelate Court, but the court upheld the previous 2010 ruling. The final court decision entered into force on February 20, 2012.

Author: Jelena Jankovic

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

Source: The court decision; DS PETOSEVIC

Bulgarian Air-Conditioning Producer Fined for Domain Infringement

2012-04-26T10:52:13+00:00

Bulgaria’s Supreme Administrative Court (SAC) has recently upheld Bulgaria’s Commission for Protection of Competition (CPC) 2009 decision against a Sofia-based company for using a domain name confusingly similar to that of its competitor.

]]>The legal proceedings were initiated by Ataro Klima, a producer of air-conditioning and ventilation equipment from Plovdiv, a town in central Bulgaria.

Ataro Klima argued that its competitor, Sofia-based Tangra AV, had registered and used domain www.ataro-klima.com (shut down in 2009), confusingly similar to its trade name and its own domain www.ataro.bg.

The CPC issued the decision against Tangra AV on the grounds of Article 35, Paragraph 3 of the Law on Protection of Competition. This provision prohibits the use of a domain name or website design identical or similar to those of other persons, in a manner that may mislead and/or injure the interests of competitors.

The CPC imposed a fine on the defendant in the amount of EUR 199,660 (USD 263,100), or two percent of the company’s 2008 turnover. The defendant appealed in August 2009 and in 2010, the SAC confirmed the infringement, but ruled that the amount of the imposed sanction was unjustified and instructed the CPC to reduce the fine.

According to the SAC instructions, the CPC reduced the fine to 19,960 EUR (26,310 USD) or 0.2 percent of the company’s 2008 turnover, and in 2012 the SAC upheld the CPC’s decision in its entirety.

Author: Valeri Penev

For more information, please contact Valeri Penev at our Bulgaria office.

Source: Bulgaria’s Supreme Administrative Court website

Heineken Wins Parallel Import Case in Russia

2012-04-26T10:47:46+00:00

On April 12, 2012, the Moscow District Federal Commercial Court upheld the appellate court decision against the Russian company Elitvoda Ru which imported Heineken Česká republika beer without the trademark owner’s authorization.

]]>On December 12, 2011, the Ninth Commercial Appeals Court ordered Elitvoda Ru to pay a fine of USD 6,700 (EUR 5,100) to Heineken Česká republika, which is part of the Heineken brewing group. The appellate court thus repealed the Moscow Commercial Court’s September 20, 2011 decision dismissing Heineken’s USD 13,400 (EUR 10,200) lawsuit against the Russian importer.

Elitvoda Ru had imported into Russia a shipment of Krusovice Imperial, Krusovice Musketyr and Krusovice Сеrne beer. According to the local regulations, only trademark owners are authorized to import trademarked goods recorded in the official customs register. Otherwise, the customs authorities are obligated to seize the goods.

Author: Jelena Jankovic

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

Source: Russian Legal Information Agency (RAPSI)

SKYY Spirits Sues Russian PTO over Trademark Cancellation

2012-04-26T10:42:57+00:00

The leading U.S. spirits maker SKYY Spirits, LLC has recently filed a lawsuit at the Moscow Commercial Court against the Russian PTO, which terminated its SKYY trademark protection in Russia due to non-use.

]]>The Russian PTO allegedly terminated the protection in October 2011 upon the request of the Seychelles-based Esmington Corporation, which claimed that SKYY Spirits does not use the trademark in Russia, while the Esmington Corporation uses the SKYY trademark for alcoholic drinks in Russia and also owns the SKY-HI and HI-SKY trademarks.

The hearing is scheduled for June 13.

Author: Jelena Jankovic

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

Source: Russian Legal Information Agency (RAPSI)

Serbian Red Pepper Chutney Registered as Appellation of Origin under Lisbon System

2012-04-26T10:36:57+00:00

On April 5, homemade red pepper chutney from the town of Leskovac in the south of Serbia, in Serbian “Leskovački domaći ajvar”, was entered into the World Intellectual Property Organization’s register in accordance with the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration.

]]>As a result of the registration, the producers wishing to sell this product must become members of the local association of producers and accept certain obligations with regard to the manufacture and the quality of products.

The Leskovac pepper chutney, produced in a traditional manner, protected its name and geographical origin with the Serbian IPO in April last year.

This is the third product from Serbia to be protected under the Lisbon system, the first two being the Homolje Honey and the aromatic wine from Fruška Gora, Bermet.

In Serbia there are 58 products with geographical indications, primarily agricultural products and traditional clothing and handcrafts.

Author: Jelena Jankovic

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

Source: Blic, the Serbian daily newspaper

HIPO and USPTO Make Patent Prosecution Highway Permanent

2012-04-26T10:35:06+00:00

On April 5, the Hungarian Intellectual Property Office (HIPO) and the United States Patent and Trademark Office (USPTO) agreed to make permanent the Patent Prosecution Highway (PPH) program, which was launched as a pilot program between the two offices in 2010.

]]>The PPH enables each participating office to use the work already done by the other office, which avoids duplication of work and accelerates the patent granting procedure.

Author: Masa Lopicic

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

Source: HIPO; USPTO

Moldova and Eurasian Patent Organization Sign Cooperation Agreement

2012-04-26T10:33:43+00:00

On April 12, the Moldovan PTO and the Eurasian Patent Office (EAPO) signed a Cooperation Agreement on Legal Protection of Inventions in the Republic of Moldova.

]]>It was necessary to have the agreement signed because Moldova denounced the Eurasian Patent Convention. The denunciation takes effect on April 26.

Under the agreement, Moldova will recognize the Eurasian patents granted before the denunciation took effect, as well as the Eurasian patents granted after the denunciation took effect, if the applications were filed before April 26.

Author: Masa Lopicic

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

Source: Moldovan State Agency for Intellectual Property (AGEPI)

Croatia IPO Director Becomes EPO’s New Vice President

2012-04-26T10:31:34+00:00

Zeljko Topic, head of the Croatian State Intellectual Property Office (CSIPO), was appointed vice president of the European Patent Office (EPO) at the European Patent Organization’s Administrative Council session on March 28.

]]>Topic succeeded Ireland’s Brian McGinley. The post lasts for five years.

Topic has been the head of the CSIPO and the head of the Croatian delegation to the Administrative Council since 2004.

Topic will be in charge of the EPO’s Directorate-General Administration, which runs EPO’s support services such as Human Resources, General Administration, Buildings and Facility Management, and the Language Service.

Author: Dalibor Radovic

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

Source: EPO; CSIPO

Slovenian Customs Seize 19 Million Counterfeit Items in 2011

2012-04-26T10:29:00+00:00

According to the Slovenian Customs Administration’s recent report, in 2011 the Slovenian customs officials discovered and seized a total of 18,905,522 counterfeit items on 497 separate occasions. The most prevalent counterfeit goods were cigarettes, blank CDs and DVDs, jewelry, perfumes, batteries, watches and toys.

]]>Last year the customs officials seized 3,516 pieces of counterfeit medicine, mainly anti-impotence drugs Viagra, Cialis and Levitra, which had been purchased by individuals online.

Most counterfeits arrived in Slovenia by sea at the Port of Koper, southwestern Slovenia, and by mail in the capital of Ljubljana. The counterfeits mainly originated in China, Hong Kong and India and were mainly intended for recipients in Slovenia, Slovakia, Czech Republic, Hungary, Austria, Serbia and Bosnia and Herzegovina. Most counterfeit drugs came from India.

Author: Tatjana Simovic

For more information, please contact Tatjana Simovic at our Slovenia office.

Source: Slovenian Customs

Macedonian Customs Seize Fake Sunglasses, Apparel, Mobile Phone Accessories

2012-04-26T10:27:24+00:00

During regular controls at Macedonia’s border crossings in the period March 12 – April 15, 2012, the customs officials seized a considerable quantity of goods bearing well-known brand names, believed to be counterfeit.

]]>In the week of March 12-18, the customs officials seized 225 pairs of sweatpants bearing the marks of Adidas and Puma, while on March 21, the officials seized 1,575 pieces of men’s underwear bearing the marks of D&G, Calvin Klein, Tommy Hilfiger, Hugo Boss and Armani, 219 women’s handbags bearing the marks of D&G, Louis Vuitton and Prada, 106 women’s wallets bearing the marks of Louis Vuitton and Prada, 380 sweatpants bearing the mark of Adidas, 300 belts bearing the marks of D&G and Armani and 60 pairs of sneakers bearing the mark of Adidas.

In the week of April 2-8, the officials seized 1,920 sunglasses bearing the marks of Prada and Ray Ban, 372 sweatpants bearing the mark of Adidas, 150 remote controls bearing the mark of Samsung, 46 joysticks for Sony PlayStation 2 and four speakers bearing the mark of Sony, as well as 456 T-shirts and sweatpants bearing the marks of Adidas, Emporio Armani, D&G and Versace.

On April 11, the customs officials seized 1,046 tracksuits, shorts and boxer shorts bearing the mark of Adidas, 6,955 mobile phone accessories (earphones, adapters, batteries and covers) bearing the marks of iPhone, Nokia and Samsung, and 3,409 various products bearing the marks of Sony, HP, and Panasonic.

In the week of April 9-15, the officials seized 1,200 pairs of socks bearing the mark of Kappa, 80 tops bearing the G-Star mark, 38 pairs of sneakers bearing the marks of Nike and Adidas, 3,310 men’s shirts bearing the mark of Zara, 400 men’s pants and 350 women’s shirts bearing the mark of Polim Pier, 120 men’s shirts and 55 pairs of men’s jeans bearing the mark of Cons, and 80 men’s pants bearing the mark of Massimo Dutti.

The goods, which were found in trucks and a car with Turkish and Macedonian license plates, originated in Turkey and China, and were intended for the Kosovo and Macedonian markets.

Author: Aleksandra Pavlovic

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

Source: Macedonian Customs

Bulgarian Customs Seize Nike, Disney Counterfeits

2012-04-26T10:25:59+00:00

In the period March 1-19, the customs officials in the city of Burgas, eastern Bulgaria, seized 60,030 counterfeit T-shirts bearing the names of well-known brands, including a package with over 50,000 Nike T-shirts, which is the largest single seizure of fake Nike goods to date in Bulgaria.

]]>On March 19, the officials at the Lesovo border crossing point, southeastern Bulgaria, seized 540 tracksuits bearing the Dsquared² mark, 330 T-shirts bearing the Bikkembergs mark, and 840 T-shirts with the figurative Mickey Mouse (Disney) mark. The fake goods were found in a truck with Romanian license plates traveling from Turkey to Romania.

The rights holders have been informed of the seizure in accordance with EC Regulation 1383/2003 and the Bulgarian law on marks and geographical indications.

Author: Preslav Penev

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

Source: Bulgarian Customs

Counterfeit Alcohol 37 Percent of Russian Market

2012-04-26T10:23:48+00:00

Despite state’s efforts to combat the problem of fake liquor production, counterfeit alcohol still made up 36.5 percent of the Russian market in 2011.

]]>However, as a result of the Russian government’s strict new requirements and the re-licensing program, the number of spirit makers in Russia fell by a third to 341 in 2011, and the number of wholesale alcohol sellers fell by a fifth to 1,690.

According to the Federal Service for Alcohol Market Regulation statistics, 2,264 licenses were granted last year, which is a 34.1 percent decline compared with 2010.

Compared with 2010, vodka production in 2011 fell 9.5 percent to 86.3 million deciliters, while wine output decreased 10.5 percent to 40.4 million deciliters.

Author: Jelena Jankovic

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

Source: Russian News Agency RIA Novosti

Piracy Rates in Azerbaijan Sharply Declining

2012-04-26T10:20:49+00:00

The level of piracy in Azerbaijan in the area of audiovisual and musical works has decreased over the last six years from 90 percent to 67 percent, while the software piracy rate has dropped from 95 percent to 88 percent, Azerbaijani Copyright Agency Chairman Kamran Imanov stressed at an international conference held on the occasion of the World Book and Copyright Day in Baku on April 23, 2012.

]]>Imanov said that the industries based on copyright now contribute 4.5 percent to Azerbaijan’s gross domestic product (GDP), while six years ago it accounted for only 2 percent. In the United States the figure is 11 percent, Imanov noted.

Imanov expressed hope that on the basis of an agreement signed with Microsoft, all state institutions will gradually start using only licensed software. Imanov added that international practice shows that such measures would reduce the use of pirated software by 14-15 percent.

Author: Aleksandra Pavlovic

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

Source: Azerbaijani business information portal ABC