A Few Interesting Cases PETOŠEVIĆ Recently Completed
Albania – American Hi-Tech Company vs. Swiss Watchmaker
An American hi-tech company filed an international trademark application that was opposed by a Swiss watchmaker. PETOŠEVIĆ Albania was hired by the tech company’s law firm, to prepare a defense. After we submitted our written objections, in November 2015 the Albanian IPO partially rejected the opposition.
Both parties appealed this decision, so two separate court proceedings were held. In December 2016, the court accepted our claim against the decision of Board of Appeals of Albanian IPO. Then, in February 2017, the court rejected the opponent’s claim, making our task successfully completed.
Macedonia – Advancing an SPC Application Pending for 11 Years
In November 2013, a UK IP firm asked PETOŠEVIĆ Macedonia to take care of Supplementary Protection Certificate (SPC) application in Macedonia that was pending since 2006, as the client was anxious about the status of their case.
After inspecting the file at the local PTO, we discovered that the PTO adopted a decision in the case but this decision was misplaced and never delivered to the applicant. We filed a complaint before the Administrative Court asking it to issue a decision on the pending SPC application. After receiving the complaint, the PTO refused the SPC application arguing that the European patent application was filed before the European Patent Office prior to 2004, when SPCs became available in 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 Patent and Trademark Office or the European Patent Office, 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.
Ukraine – Successful End to Food Package Design Infringement
PETOŠEVIĆ Ukraine client, 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 the package design of the client’s food product.
We evaluated the case and advised the client to send a Cease and Desist letter 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 sent a response to the infringer’s letter insisting on the similarity between package designs, particularly the similarity between the colors and images, and dismissing the accusations of abuse of a dominant position.
As a result, the Ukrainian company decided to withdraw its product from the market.
For more information, please contact Natalia Stetsenko, who handled this case.