A Few Interesting Cases PETOŠEVIĆ Completed in 2016
Ukraine — Overcoming Provisional Refusal for a UK Construction Materials Company’s Trademark
The Ukrainian PTO issued a provisional refusal against one of our client’s trademarks claiming that the word in question is a generic term that lapsed into the public domain in Ukraine.
PETOŠEVIĆ argued that the trademark had not become customary in the trade, that it was in fact associated solely with the client and used by the company for wall coverings. Our practitioners explained the history of the invention and the etymology of the word, alongside other arguments, and managed to overcome the provisional refusal and get protection for this trademark in Ukraine.
Serbia – Copyright Advisory Work for a Snack Food Company
Another client, a subsidiary of a multinational food, snack and beverage corporation, was organizing a music contest in Serbia inviting the public to hand in 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 the client that such a song could be considered a derivative work of original songs and therefore not allowed by 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 of art. Namely, if a new song is created by using characteristic elements of two or more existing songs, it is necessary to obtain permission even if it is just a small part of an existing song, as there is no clear legal standard regarding what is considered minimum usage, i.e. a “small enough” sample.
PETOŠEVIĆ advised the client to change the rules of the contest and request a new original song instead of a “mashup”. Our attorney also suggested that a copyright agreement be signed with participants before taking part in the contest. The client took the advice and the contest was completed successfully.
For more information, please contact Ana Stojanović, who handled this case.
Slovenia – C&D Letter and Negotiations for a Sports Headwear Producer
A PETOŠEVIĆ client, 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 client 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 client for the damage caused by providing free advertising during the 2016 Ljubljana Marathon, organised by the infringer in October 2016.
Bulgaria – Trademark Infringement Action for a Multinational Clothing Company
One our clients is a multinational clothing company which has several prominent clothing stores and brands. On several websites, a Bulgarian company offered people who enter their email addresses and other personal information a chance to win vouchers bearing one of our client’s trademarks. The websites were targeting Belgian, Dutch and Polish consumers.
On the basis of our client’s European Union trademark, PETOŠEVIĆ managed to obtain a Europe-wide preliminary injuction against the defendant and close the websites. In May 2016, the Sofia City Court confirmed that the client’s trademarks were infringed and ordered the defendant to stop the infringing use.