The Lay of the Land

Nov 27 2015 - 12:55

Article by Predrag Anokić, Senior Associate and Trademark and Patent Agent, first published in IPPro The Internet, June 2015

Not many people are aware of the fact that Serbia was one of the 11 founding members of the Paris Convention in 1883. The states that emerged later following the merger of the Kingdom of Serbia and the State of Slovenes, Croats and Serbia, at the beginning of the 20th century (Kingdom of Serbs, Croats and Slovenes, later changed to the Kingdom of Yugoslavia and then Socialist Federal Republic of Yugoslavia, which disintegrated following the conflict in the Balkans in the early 1990s), simply accessed the Paris Convention accordingly.

Nevertheless, despite this long tradition in intellectual property protection, the turbulence that characterised this region at the end of the 20th century has left its mark in almost every aspect of the normal functioning of these independent states, including the IP sphere.

In the meantime, some of the countries in this region have become members of the EU, marking the end of their recovery and transition. The others are still struggling to find their way into the EU.

On their way, most of these remaining countries have aligned their national legislations with EU law to a great extent. However, their application in practice still needs work.

The IP sphere, next to human rights, was the first to deteriorate following the events in the Balkans in the early 1990s, and understandably required the most work.

Most of these countries/regions, namely Serbia, Montenegro, Albania, Kosovo and Macedonia, have managed to establish basic legal protection for IP rights. IP owners can now, more or less, count on their rights being protected in these countries against the oldest forms of infringement, in particular, the importation of counterfeit goods and the registration of confusingly similar marks.

However, when it comes to IP protection on the internet, and in particular social networks, this is area still eagerly awaits progress.

The IP situation also varies from country to country.

The initial Serbian Law on Electronic Trade (2006) already prescribed that intermediaries will not be held liable for acting as a mere conduit, caching and hosting under the same conditions foreseen by the European Directive on Electronic Commerce. This was confirmed in practice with a few court decisions, so we can say that in Serbia, there is no reason for concern in this respect.

The amendments to the Law on Electronic Trade from 2013, specifying certain terms and eliminating ambiguities, were also aimed to regulate the notice-and-take-down procedure in Serbia and introduce the possibility of a court restricting the services of a particular service provider at the rights owner`s request.

However, even though these amendments specified the content of a takedown notice and entitled the court to restrict the services of particular service providers, these issues are not yet properly regulated.

Namely, although a more detailed notice will definitely help service providers to decide on the removal of certain content, this issue is not yet regulated to the extent that could guarantee them sufficient legal certainty.

The Bosnian Law on Electronic Trade excludes liability of the service providers for acting as a mere conduit, hosting, linking, caching or providing the service of search engines. This liability exists only in a limited number of situations, complying therefore with the European directive.

One of the conditions under which service providers may be held liable is if the provider has ‘reliable information’ on unlawful activity and does not remove the infringing content.

‘Reliable information’ is still a vague legal standard and further clarification is required, either through practice or legislative activities.

In practice, most local service providers consider the rights holder`s takedown notices as reliable and remove the infringing content swiftly. However, they do not share the details of the party that uploaded the content.

Apart from the Trademark Law, Kosovo has no specific law that could be relied on for enforcing IP rights on social media.

There have been a number of cases where infringers have created infringing Facebook profiles and used them to sell counterfeit goods. Although some of these cases ended up in court, liability of the intermediary never came up because the service providers complied with the takedown notices in accordance with their internal policies and closed the infringing profiles.

The Trademark Law has no provisions that could justify secondary liability of service providers, so we find that it would be difficult to establish their liability for caching, hosting or acting as a mere conduit. However, if charged under the provisions of the Criminal Code, the service providers may be held liable as contributories.

The Albanian Law on Electronic Trade from 2009 (amended in 2013) proclaimed that it had adopted solutions from the European Directive on Electronic Commerce. Although the law indeed adopted most of the legal definitions and concepts from the directive, for some reason IP matters have been explicitly excluded from application of the Albanian law.

On the other hand, the law has fully transposed the provisions of Articles 12 to 14 of the directive, meaning that the intermediaries cannot be held liable for mere conduit, caching and hosting.

At the same time, the case law in this respect is lacking. Most of the cases are settled out of court during negotiations, while the ones brought before courts are still being processed. To the best of my knowledge, not a single decision has been taken in this respect by the Albanian authorities so far, so we will need to be patient and see what the practice has to say.

According to the Macedonian Law on Electronic Commerce, the services of the information society service providers can be limited in cases of IP infringement. At the same time, the law excludes liability of these service providers for caching, hosting and acting as a mere conduit.

In practice, local auction sites act on takedown notices and remove infringing content very quickly, without asking for extensive evidence or information in return.

As in other countries, the takedown procedure is not institutionalised. However, the State Market Inspectorate and the Agency for Electronic Communications are competent for supervision of this law, meaning that, in practice, a takedown notice could be submitted before the State Market Inspectorate, which, in turn, would have to act in accordance with its powers. The case law is also lacking in Macedonia. We could not find a single example of a proceeding initiated before the Macedonian authorities. However, this is not that strange given that most of the disputes are resolved with warning letters and in accordance with the service providers` internal policies.

Being an EU candidate country, Montenegro has fully harmonised its IP laws with the EU law.

There are no separate regulations that treat online infringements, but the general provisions on infringement apply to online infringements as well. The local Law on Electronic Commerce outlines liability of the intermediaries in these situations in the same manner as the European directive, prescribing that they could not be held liable if they remove or disable access to particular information upon becoming aware of the infringing action or information. A specific takedown procedure is, however, not regulated.

Although the courts in Montenegro have recognised the need to act swiftly in IP matters, especially with issuing preliminary injunctions, concrete case law is still missing.

To avoid blaming the above situation only on the local authorities and legislators, one of the reasons for such poor practice in most of the countries mentioned above is that the right owners have no economic interest to engage in complex proceedings in these, rather, insignificant marketplaces in situations where they often achieve positive results with warning letters and takedown notices. Therefore, it is no surprise that the practice is building up slowly.

To conclude, although it might be necessary to invest a bit more effort than one may expect in more developed countries, there are mechanisms for contesting infringement of IP rights on the internet in the above countries. Waiting for the practice to build on its own would definitely not help.

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