PETOŠEVIĆ has over 2,000 clients, a diverse mix ranging from individual entrepreneurs to world’s leading corporations.
Up to 30% of the world’s top 500 corporations have worked with us, either directly or through their coordinating counsel.
We register, protect and enforce IP rights in multiple jurisdictions for:
- a major snack and beverage corporation
- a global hotel giant
- a leading rental online marketplace company
- a multinational pharmaceutical giant
- a major sportswear corporation
- a multinational fast fashion retailer
- a major television network
- major social networking companies
In 2021 we had over 10,000 cases.
OUR WORK IN NUMBERS
In 2021 we processed nearly 3,000 trademarks and patents.
EXAMPLES OF OUR WORK
Uzbekistan – Trademark Enforcement for a Multinational Confectionery Manufacturer
PETOŠEVIĆ Uzbekistan represented a multinational confectionery manufacturer in an enforcement case that involved imposing administrative fines for trademark infringement on a local manufacturer of the well-known candy bar lookalikes. Through a series of meetings and official requests between January and March 2020, we persuaded the Ministry of Justice and the local IPO that they could, according to the newly adopted legislation, initiate administrative proceedings for trademark, copyright and patent infringement, which lead to a game-changing shift in Uzbek IP practice. To our knowledge, this ruling is the first of its kind in Uzbekistan since 1994.
Hungary – Infringement Case for a Well-Known Vehicle Manufacturer
In 2019, we successfully represented a US vehicle manufacturer and clean energy company in an infringement case against a Hungarian company that was using the US company’s trademark and copyright on their website, social media and in their trade name. A successful outcome was achived – the Hungarian company changed its name, removed all infringing content from the internet and transferred the infringing domain name.
Bulgaria – Revocation Action for a Mexican Jewelry Manufacturer
After two years of court battle, in April 2020 the Supreme Court of Bulgaria confirmed the Bulgarian IPO’s decision to revoke a Bulgarian trademark against which we filed a non-use revocation action on behalf of a Mexican jewelry and watch manufacturer. The Bulgarian trademark was retrospectively revoked as of 2011 and the Mexican manufacturer was awarded the costs of judicial proceedings.
Ukraine – Successful End to Food Package Design Infringement
A well-known manufacturer of confectionery and other food products was alerted about a Ukrainian food product sold in a package with a design confusingly similar to their own. A Cease and Desist letter was sent to the alleged infringer, who then rejected our client’s demands, supported their position with an expert report on likelihood of confusion and similarity prepared by a third party, and accused our client of abuse of a dominant position and abuse of rights. We successfully argued in our response to the infringer’s letter and as a result of our convincing arguments the Ukrainian company decided to withdraw its product from the market.
Bulgaria – Infringement Case for a Leading Electronics and Lighting Company
Bulgarian police authorities from the city of Plovdiv revealed an organized criminal group involved in the production and distribution of fake light bulbs infringing a trademark owned by a multinational technology company, the owner of numerous trademarks for various types of goods, including lighting products and appliances. The members of the criminal network imported plain, blank bulbs from China, printed fake logos on the bulbs and on their packaging and distributed the finished products, mainly to clients in Greece. After successful representation in a prolonged court battle, the case was finally settled in court in January 2018. The defendants pleaded guilty, were put on probation and fined.
Albania – Invalidation Case for a Leading Oil and Gas Corporation
Albanian oil and gas company filed oppositions against an American multinational oil and gas corporation’s device marks based on its prior registered mark. The American corporation filed a request to invalidate the Albanian oil and gas company’s trademark based on the well-known status of their device marks. The invalidation request was at first rejected by the IPO, but the IPO Board of Appeals accepted the well-known status of device marks and invalidated the Albanian company’s trademark. This was the first decision taken by the IPO Board of Appeals stating that right holders can request the confirmation of the well-known status of their marks before the Albanian IPO. The Albanian company did not file a lawsuit against the Board of Appeals decision.
Bosnia and Herzegovina – Lookalike Case for a German Luxury Fashion House
Over 10,000 counterfeit perfumes were detained at the Gradiška border crossing with Croatia. The infringer claimed that the goods were genuine and an infringement action was filed before the Regional Commercial Court in Prijedor. Similar cases were brought against the same infringer in multiple jurisdictions globally. Expert opinion on lookalikes was supplied to the court. The court ruled in favor of the plaintiff and the goods were eventually destroyed.
North Macedonia – Advancing an SPC Application Pending For 11 Years
In 2013, a UK IP firm asked PETOŠEVIĆ North Macedonia to take care of an SPC application in North Macedonia that was pending since 2006. We discovered that the PTO brought a decision in the case but this decision was misplaced and never delivered to the applicant. We filed a complaint before the Administrative Court, but the PTO refused the SPC application arguing that the European patent application was filed before the EPO prior to 2004, when SPCs became available in North Macedonia. However, because the extension of the European patent in Macedonia was filed in 2005, and the relevant legal provision prescribed that SPCs will be available for applications filed before the “Office” after January 1, 2004, with “Office” being an ambiguous term that could refer to the Macedonian PTO or the EPO, we appealed this decision before the Administrative Court. On January 5, 2017, the Administrative Court cancelled the PTO’s previous decision and recommended a re-examination of the case on its merits. On July 27, 2017, the PTO accepted the SPC application.
Slovenia – Patent Infringement Case for a German Fastening Technology Company
In 2017, a Slovenian company was selling and advertising a dowel used in the same manner as covered by our client’s patent claims. Following a Cease and Desist letter claiming patent infringement, and lengthy but successful negotiations, the Slovenian company ceased manufacturing and selling their product.
Bulgaria – Enforcing Baby Stroller Patent And Design Rights
PETOŠEVIĆ handled infringement investigations and enforcement of intellectual property rights belonging to a well-known manufacturer of children’s furniture and accessories. We were successful in enforcing the manufacturer’s design and patent rights in Bulgaria in judicial proceedings against a local distributor of strollers. Eventually, the defendant acknowledged the infringement, paid a partial compensation and promised to refrain from selling the infringing products in the future.
Serbia – Important Court Decision on Fake Car Parts
PETOŠEVIĆ Serbia represented the right holders, French car manufacturer Renault and its Romanian subsidiary Dacia, in court proceedings against a Serbian company that was distributing car parts bearing fake Dacia’s trademarks and visually identical to the original ones protected by Renault’s designs. In 2021, the Commercial Court in Belgrade issued a first-instance decision stating that the import and sale of car parts visually identical to those protected by industrial design registrations valid in Serbia constituted industrial design infringement. This is the first ruling of its kind in Serbian practice, and is therefore significant because it is likely to influence future decisions related to counterfeit car parts. The court also awarded damages in this case – it is rare in Serbian practice for a court to award damages caused by IP infringement, particularly design infringement. The Commercial Court’s decision has been appealed, but it appears unlikely that the decision will be overturned.
Multiple Jurisdictions – Advising Social Networking Companies
PETOŠEVIĆ has been advising two well-known social networking companies in multiple jurisdictions regarding various reports of trademark, design and copyright infringement, as well as alleged defamation on their platforms. Our team evaluated the reports from the perspective of local legislation and presented possible solutions for tackling illegal content in order for the social networks to avoid secondary liability for hosting it. Our advice often involves careful analysis of whether certain content is defamatory or IPR infringing in the light of applicable legislation and this sometimes entails achieving a fair balance between legitimate rights and the freedom of expression.
Serbia – Copyright Advisory Work for a Snack Food Company
A subsidiary of a multinational food, snack and beverage corporation was organizing a music contest in Serbia inviting the public to submit new songs. They turned to PETOŠEVIĆ for an opinion on whether it was legal to create “mashups” – songs created by mixing two or more pre-recorded songs – for the purpose of the music contest. PETOŠEVIĆ advised that such a song could be considered a derivative work of original songs, prohibited under the local Law on Copyright and Related Rights, unless permission was obtained from authors or holders of the copyright for the alteration of their works. PETOŠEVIĆ advised the client to change the rules of the contest and request a new original song instead of a “mashup”, as well as sign copyright agreements with participants before they take part in the contest. The client took the advice and the contest was completed successfully.
Serbia – Copyright and Trademark Infringement Case for a Well-Known Social Network
A Serbian trademark squatter filed a trademark application seeking to register the name of a popular social network’s video hosting service whose owner did not have a prior trademark registration in Serbia. It was therefore necessary to file a trademark application for a similar mark, claiming priority of the client’s prior trademark applications filed in Brazil in the previous six months, and file a complaint against the infringing application in Serbia. In addition, there was a copyright claim over the name of our client’s service because it is part of their copyrighted work (Article 3 of the Serbian Law on Copyright prescribes that a title of the work of art will also be protected by copyright as its integral part). The Serbian IPO refused the infringing application.
Slovenia – C&D Letter and Negotiations for a Headwear Producer
A sports headwear producer learned that a Slovenian organization active in the implementation of sporting programs infringed their trademarks and copyright by selling products bearing their trademark without authorization during the 2013 Ljubljana Marathon. PETOŠEVIĆ assisted the headwear producer with sending a Cease and Desist letter to the infringer and with lengthy negotiations in the course of 2014, 2015 and 2016. An agreement was finally reached according to which the infringer compensated the headwear producer for the damage caused by providing free advertising during the 2016 Ljubljana Marathon, organized by the infringer in October 2016.
Serbia – Court Issues Interesting Decision in UGG Boots Case
PETOŠEVIĆ Serbia represented Serbian footwear manufactuer Obuća Metro in a case where they were sued by American footwear company Deckers Outdoor Corporation (the owner of UGG) for selling boots similar to UGG boots. Deckers did not have a registered design for UGG in Serbia, so they based their lawsuit on copyright infringement (copyright for the drawing of the UGG boot design in their EU/US design registration). We argued that Deckers did not prove that the (copyright) economic rights were transferred to them, and the Commercial Court in Belgrade dismissed the lawsuit as legally unfounded in September 2021. The Commercial Court’s decision has been appealed, but it appears unlikely that the decision will be overturned. This case is interesting because it emphasizes the need to register designs in order to be able to claim infringement.
Ukraine – Domain Name Case for a Contact Lens Manufacturer
In March 2020, PETOŠEVIĆ Ukraine successfully represented a leading American contact lens manufacturer in a domain name dispute under the UA-DRP procedure before the WIPO Arbitration and Mediation Center. The unauthorized use of the client’s trademarks ceased and the disputed <.COM.UA> domain name was transferred to the client. This decision was among the first ones issued by the WIPO Center following the introduction of the UA-DRP procedure in Ukraine.