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31 January 2019
LIFE +70 YEARS: COPYRIGHTED WORKS THAT HAVE ENTERED INTO THE PUBLIC DOMAIN IN 2019 - A EUROPEAN PERSPECTIVE

To quote Albert Camus’ novel Jonas or the artist at work: “To create something new, one must be surrounded with the old." However, the “old” may not be that old, and it may still be subject to copyright protection. In such a case, an author that seeks to create a derivative work from the preexisting work, needs to obtain the permission from the original author. However, such permission is not required if the prior work has entered into public domain, meaning that the copyright protection over such work has expired.

Each January 1 is celebrated as Public Domain Day throughout the world, the day when copyrighted works, in accordance with the national legal requirements of most countries, transition into the public domain. Although Public Domain Day is not officially recognized by international organizations like WIPO, the same is celebrated by a number of different organizations worldwide.

The Public Domain Day of 2019 will be remembered by the fact that for the first time in this millennium, copyrighted works have entered into public domain in the United States. Works such as Cecil DeMille’s film The Ten Commandments, Agatha Christie’s novel The Murder on the Links, Aldous Huxley’s novel Antic Hay and many others entered into the public domain on January 1, 2019 for the territory of the U.S.

All of the above-mentioned works were published in 1923, and in accordance with U.S. law, the term of protection for such works was 95 years. These works were originally protected by the 1909 Copyright Act, and due to subsequent changes in legislation, the term of protection increased from up to 56 years originally (28 years with the possibility of one renewal for another 28 years) to up to 95 years (depending on various factors such as publication date, date of renewal, etc.). This extension of the term was introduced by the 1998 Copyright Term Extension Act (also known as the “Mickey Mouse Protection Act” due to extensive lobbing by the Walt Disney Company).

Because of the changes related to the term of protection of works that had been protected under the 1909 Copyright Act, a huge gap was created between the works that have been published in 1922 and those that were published in 1923. The works published in 1922 had a shorter term of protection, as they were not subject to the extension provided in the 1998 Copyright Term Extension Act. For that reason, those works entered into the public domain on January 1, 1998, while protection of works published in 1923 extended for an additional 20 years.

On the other hand, the current regime of copyright protection in the U.S. is governed by the 1976 Copyright Act (entered into force on January 1, 1978) that provides the term for copyright protection of 70 years following the author’s death (or 70 years following the death of the last coauthor in the event that the work is created by two or more coauthors). This term of protection is applicable only to works that have been created on or after January 1, 1978, or for works that were created before that date but were not published or registered before the U.S. Copyright office before January 1, 1978.

Also, under the 1976 Copyright Act, the term of protection for works made for hire and for anonymous and pseudonymous works is 95 years from first publication or 120 years from creation of the work, whichever is shorter. However, if the author’s identity is subsequently revealed, the standard term of 70 years following the author’s death applies.

Whenever the subject of copyrighted works entering into the public domain is discussed, it should be borne in mind that there is no such thing as entering into the public domain on a worldwide scale. Instead, each copyrighted work enters the public domain separately in each jurisdiction and in accordance with the copyright laws of such jurisdiction.

Although there are no registration formalities required for copyright protection in the majority of countries, that does not mean that the same work enjoys the same level of protection in each country. On the contrary, once the work is created (regardless of the place of creation) it is recognized in each country in accordance with the local law.

That means that the duration of a copyright will be calculated separately in each country in accordance with the term of protection provided in the national law (or in accordance with the minimal rights provided in international treaties such as the Berne Convention).

For instance, Agatha Christie’s novel The Murder on the Links is now in the public domain in U.S. territory, but still enjoys protection in a number of other countries. As Agatha Christie died on January 12, 1976, her works will not enter into the public domain before January 1, 2047 in all jurisdictions where copyright lasts for the author’s life and 70 years after the author’s death. The practical consequence is that U.S. publishers can freely publish this book without requesting any authorization from Christie’s legal successors and without any obligation to pay for the rights or to pay royalties. However, this convenience is limited to the U.S. only, and if the U.S. publisher would prefer to sell such a book in countries where copyright protection is still in force, they would need to obtain the necessary rights from Christie’s legal successors or otherwise might be found liable for copyright infringement.

Unlike the U.S., the perspective on copyright duration in the majority of European countries provides rather uniform rules for all works, regardless of the date of their publication (provided that the author of such works is known or that the works were not published under a pseudonym). In particular, this means that the term of protection is the same for all works that were subject to copyright (i.e. the works for which the protection has not expired) at the time when national copyright laws entered into force. There are, of course, some exceptions and some countries still have parallel systems in force similar to the one applicable in the US. Nonetheless, the majority of European jurisdictions recognize the system of copyright protection that lasts for the life of the author and 70 years following the death of the author (or 70 years following the death of the last surviving coauthor in the event of co-authorship). Furthermore, a vast number of these countries calculate the date of a work entering into the public domain from the first day of the year following the year in which the 70th anniversary of the author’s death occurred.

This means that under this system, works of authors who died in 1948 have entered into the public domain on January 1, 2019. Among many others, the works of the following authors are now in the public domain:

Sergei Mikhailovich Eisenstein (Soviet film director and film theorist, best known for the movie Battleship Potemkin – although some of his films may not have entered into the public domain yet, due to issues related to co-authorship, his literary works related to film theory are undoubtedly in the public domain now)

Antonin Artaud (French playwriter, poet, essayist, actor and theatre director; one of the most important figures of European avant-garde theater)

Zelda Fitzgerald (American writer, painter and dancer; wife of writer F. Scott Fitzgerald, best known for her autobiography Save Me the Waltz)

Sonny Boy Williamson I (American blues musician, known for original songs and covers such as Good Morning Little Schoolgirl, Stop Breaking Down and Sugar Mama)

Mahatma Gandhi (Indian activist and author of a number of literary works)

David Wark Griffith (American film director, writer and producer, best known for 1915’s controversial film The Birth of a Nation; as for all film directors, it should be borne in mind that some of his films may not have entered yet into public domain due to issues related to legal treatment of co-authorship)

Arshile Gorky (Armenian-American painter, best known for his abstract expressionism works)

It should be borne in mind that in the majority of Civil Law systems (which is the dominant legal system in Europe excluding the UK and Ireland), copyright laws make a clear distinction between duration of moral and economic rights of the author. Some common moral rights are the right to attribution, right to the integrity of the work and right to object to any use of the work that could harm the author's reputation. The practical consequence of such a distinction is that in the majority of Civil Law systems, only economic rights are subject to expiration, while moral rights last indefinitely.

Therefore, although the economic rights may have expired in certain jurisdictions, that does not necessarily mean that the moral rights have expired as well, and one can still be held liable for infringement of the moral rights of the author.

As we can see from the above, copyright duration is a complex question, and works that are in the public domain in one country, have not necessarily reached that status in another country. Also, entry into the public domain does not necessarily result in the expiry of moral rights on the side of the author’s legal successors. Public Domain Day, therefore, might be celebrated throughout the world each January 1, but the content of the celebration may differ significantly in each country.

Getting back to Albert Camus’ quote from the beginning of this article, we can agree that “old” is necessary for development of “new” and that free access to prior works makes a great significance in the development of each author. It is not just a matter of influence and learning process that builds new authors. Adaptation of prior works by creating derivative works also provides a whole new spectrum of creativity and the ability to give fresh life to existing works. And one will not be able to freely give fresh life to Albert Camus’ works until 2031, at least in Europe.

Authors:
Stefan Bojović

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24 January 2019
NEW RELATED RIGHT ON THE HORIZON?

As a part of the EU’s copyright reform package that aims to modernize copyright legislation that predates the Internet era, the EU has proposed the introduction of a new related right for press publishers. The new related right is embodied in Article 11 of the proposed Directive on Copyright in the Digital Single Market (“Copyright Directive”).

Rationale for introduction of the right

The purpose behind the new related right is to improve the financial position of press publishers that now struggle to maintain their financial stability. In the last decade, people have changed the way they consume news and mainly have switched to news aggregation services and other online service providers. News aggregators like Google News or Bing News offer news from various sources and have become a one stop shop for many internet users. Their business model is based on posting short news snippets that are followed with a link to the article. As they offer easier ways for people to catch up with everyday events, for many consumers, this has become the preferred source of information. The current state of affairs permits news aggregators to exploit publishers’ investments in creating news by freely posting their news and gaining profit at the publisher’s expense, without being required to conclude a licensing agreement or pay any fee to press publishers. Having in mind the vital role that news publishers play in democratic societies, the EU has decided for a radical move in order to remedy the current situation and force news aggregators to start compensating news publishers for posting their content. The move is manifested in a proposal for the introduction of a new related right for press publishers, similar to the right that movie producers, record producers and broadcasters already have.

Scope of the right

The new exclusive right aims to grant to press publishers control over digital uses of their publications. That includes the reproduction right and the right of communication and making available to the public pursuant to Articles 2 and 3(2) of the InfoSoc Directive 2001/29/EC. The subject matter of the right is a press publication. The right is set to last for five years from the beginning of the year that follows the date of publication.

The revised text of the directive that was adopted by the European Parliament on 12 September 2018 differs from the earlier versions as it introduces some novelties with the aim to safeguard freedom of expression and answer to some of the initial concerns raised by the opponents of the new related right. For that reason, the newly introduced Paragraph 1a of Article 11 specifies that the new related right does not cover the use of press publications for legitimate private and non-commercial use by individual users. The same article in the following paragraph further specifies that the new right will not extend to mere hyperlinks which are accompanied by individual words. In other words, sharing a hyperlink that is followed with several words that describe the link will not be considered as an infringement of the new related right. Although the exact scope of this provision is yet to be interpreted in practice if not clarified before the final vote, it seems that news aggregation services will not be protected with this provision as they usually accompany links with an excerpt from the article that contains more than several words. Finally, the directive demands from member states to introduce a mechanism that will enable authors to partake in the additional revenue that press publishers receive when licensing the press publication.

Opposition – some of the concerns

The explanation given by the EU on why the new related right should be introduced into the EU legal system appears to be reasonable at the first glance. It is in the interest of the general public to prevent press publishers from struggling, and granting greater leverage to them when negotiating licensing fees seems legitimate. However, not everyone is satisfied with the wording of Article 11 and besides large publishers and press associations that are in support of the new exclusive right, it is hard to identify who else sides with them. Tech companies, scholars, non-governmental organizations along with other actors have all raised their concerns. The general sentiment is negative, and many critics fear that the new right will fail to fulfil its main objective to secure the extra revenue for publishers but will actually result in further asymmetry in the media market, threatening the freedom of expression.

Naturally, companies that operate news aggregation services are particularly against the new right that will require them to start paying licensing fees to the publishers for posting links accompanied by excerpts from their news articles. That is why a part of the public refers to the new related right as the “Snippet tax” or the “Link tax”. Google even went so far as to state that it will consider shutting down Google News in the EU countries if Article 11 is enacted in its current form. The same tactic was deployed in 2014 when the newly introduced Spanish legislation tried to force Google to remunerate publishers when sharing links and excerpts of news articles. As publishers were prohibited by law to conclude free licensing agreements, the tech giant decided to shut down the Spanish version of Google News. A year earlier, a similar right had been introduced in German law; however, as publishers lacked a bargaining chip and the traffic to their websites plunged, the law resulted in publishers giving free licenses to Google to use their publications. Both cases are often cited by the opponents of the directive when claiming that the right will not provide expected financial benefit as in the recent past the introduction of such related right did not live up to the expectations.

Another frequently heard concern is that the new exclusive right would make rights clearance for news articles more difficult. Namely, press publishers already acquire the author’s copyright on publications either through national rules on employer’s ownership or contracts with authors, hence the additional right would only add another layer of rights to the same copyrighted content and increase transactional costs. The consequence of that could be a scarcity of trustworthy information as news aggregators in the absence of licensing agreements with publishers could easily slide into posting news from unreliable sources that will not seek remuneration. Another possible outcome is that the main players on the news market like Google or Facebook, due to the increased transaction costs, would be the only ones able to conclude licensing agreements with the most relevant press publishers. The result would be asymmetry in the media market as smaller news aggregators and start-ups in the field would hardly be able to compete with the tech giants.

A brief comment

The idea to introduce a new right that will enable news publishers to gain additional profit and force information society service providers like news aggregators to compensate them seems fair on its face. The question is whether this is a proper way to do so. Having in mind the text of Article 11 as it stands now, it is evident that provisions are not clear enough and further wordsmithing is required. In addition to that, the aforementioned concerns raised by many stakeholders seem legitimate, and they must be taken into account. There is still time for further adjustments, and the EU negotiators should use the time wisely. Making such changes at this stage and finding a middle ground that will strike a fair balance between competing interests is going to be a demanding task, but policymaking was never meant to be easy.

Where are we at?

The earlier version of the Copyright Directive adopted by the European Parliament's Committee on Legal Affairs (JURI) was rejected by the members of the European Parliament on 5 July 2018. After the text was brought back to the drawing board, an amended version of the Copyright Directive was adopted by the European Parliament on 12 September 2018.

At the moment, so-called “Trilogue negotiations” are taking place where the final text of the Directive will be decided in negotiations between representatives of the European Parliament, the European Commission and the Council of the EU. After that, the final plenary vote in the European Parliament will be held. For now, it is hard to say a specific date as due to the colliding views over the content of Articles 11 and 13, negotiators are having a hard time bringing everyone on the same page. The final trilogue meeting planned for 21 January 2019 was called off due to opposition from the Council several days before when 11 member states rejected the revised text proposed by Romania. These developments will probably postpone the final vote initially expected to take place in March 2019 until after the elections for the European Parliament scheduled for May 2019.

Regardless of whether Article 11 gets enacted in its current form or not, the outcome is relevant for Serbia as well as for other non-EU countries of the region. Even though not currently a member of the EU, as a candidate country for accession to the EU, Serbia is required to align its laws with the EU’s. Therefore, the sound from Brussels will resonate far beyond the EU.

Authors:
Stefan Filipovic

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15 January 2019
GREEN LIGHT FOR .COM DOMAIN NAMES PRICE INCREASE

Introduction

Verisign and the U.S. Government have agreed on extending the Cooperative Agreement. The extension allows .com registry operator – Verisign to raise the wholesale price of registration and renewal fees for .com domain names. Article 2(a) of Amendment 35 to the Cooperative Agreement allows price increases of up to 7% annually in each of the last four years of every six-year period of the .com Registry Agreement with ICANN. In other words, by 2024 the yearly wholesale registration and renewal price of domain names in the.comregistry can achieve $10.29 - an increase of 30% from the current $7.85.

ICANN’s consent is still required

Yet, in addition to the Cooperative Agreement, a price cap is also set by the ICANN .com Registry Agreement. Therefore, before proceeding with a price hike, Verisign will need to obtain the approval from ICANN as the current .com Registry Agreement keeps the price at $7.85. However, it is highly expected that ICANN will allow the increase as a) in the past ICANN has consented to price hikes on multiple occasions; b) ICANN has a share in each renewal and registration and c) at the moment when ICANN is facing budgetary cuts, extra money in the fund is more than welcome. For those reasons, the current state of affairs suggests that ICANN will allow a price hike.

Why is this price hike particularly relevant?

With over 138 million registered .com domain names and a market share of 84%, Verisign holds a dominant position on the generic top-level domains (“gTLDs”) market. Add to that the fact that 485 out of 500 companies on the Fortune 500 list use a .com, one can conclude that .com is the most dominant brand extension.

Due to the .com popularity, there is an expectation from users to access a website through a .com extension. Therefore, it can be argued that among top-level domains, there is no real substitute for .com. But even if there was, the cost of switching from .com to another top-level domain can result in high transaction costs. Hence, the popularity of .com along with network effects, significant switching costs and sole impracticality deter registrants from migrating to any other top-level domain (“TLD”) extension. Simply put, Verisign’s significant market power allows them to raise the prices without fear of losing customers to competitors.

Is there a justification for the price hike?

Having in mind Verisign’s dominant position on the market, which makes it resistant to any competition decisions, the important question is whether there is any justification for an increase in .com fees.

Operating costs of the .com registry are quite modest and experts estimate that Verisign has fixed expenses from $1.00 to $3.50 per domain name per year. Moreover, due to the fast-paced development of technology, it is expected that in the following years, the operation of the registry is going to become even cheaper than it is today. While the price of operating the .com registry does not go up, the number of .com domains has grown by 135% from 59 million registered domains in 2015 to 138 million in 2018. Hence, any increase in price is funneled directly to their bottom line. Verisign is an extremely profitable organization with its gross profit margin exceeding 80% in 2017 when the company accumulated gross income of 972 million on 1.17 billion in revenue.

Even though Verisign’s profitability is not at stake, as a privately-owned enterprise, it certainly has a legitimate goal to maximize its profits. Therefore, even though at the moment there is no pressing economic need for the price increase, Verisign obviously has an interest in generating income for its shareholders like any other corporation. While end-users might resent paying more money without a commensurate increase in operating expenses or improvement in service, Verisign’s motivation to increase revenue is not without precedent among businesses. Nevertheless, the legitimacy of the possible decision to lift the price freeze could be challenged given the fact that Verisign only provides technical services for the TLD registry it operates and is not actually the owner of the .com gTLD, but that would be for ICANN to address once the process of amending the registry agreement commences.

The U.S. Department of Commerce provided another justification for the price hike in the preamble of Amendment 35 to the Cooperative Agreement where it is specified that the Department “finds that ccTLDs, new gTLDs, and the use of social media have created a more dynamic DNS marketplace;” and that one of the goals of this amendment is “to provide pricing flexibility for the registration and renewal of domain names in the.comregistry.”

In light of that, it truly cannot be contested that now the domain name marketplace is indeed far more dynamic than a decade ago. Expansion of the domain namespace that emerged with the introduction of new gTLDs in the 2012 gTLD Application Round created numerous alternatives that made some registrants migrate from .com to newly introduced gTLDs. Furthermore, widespread use of social media influenced some in the small business sector to abandon their .com domain registrations and narrow their internet presence only to Facebook, Instagram and similar platforms. While the aforementioned changes in the DNS marketplace are capable of disrupting the .com dominant position and therefore providing pricing flexibility to Verisign is somehow understandable, the question is whether the extension of the Cooperative Agreement that hypothetically speaking allows Verisign to increase prices by roughly 30% by 2024 is fair. For tackling this question properly, a deeper economic analysis is required. However, due to the more competitive DNS marketplace that now offers more possibilities to registrants than ever, Verisign may think twice before proceeding with the price increase. That is why no one can guarantee that Verisign will increase .com registration and renewal fees to the maximum permitted price as such a bold move could easily backfire on it.

Who is going to be hurt?

The ultimate price for domain name renewals and registrations is set by ICANN accredited registrars (such as GoDaddy, Tucows Domains, NameCheap, etc.) and consists of a wholesale price + registrar's fee. Hence, the increase in wholesale price will definitely provoke registrars to charge their customers more for .com domain name registrations and renewals. Due to the importance of the .com extension, the vast majority of registrants will comply with increased fees. Therefore, the price hike will have an impact on basically all consumers that include non-commercial users, small businesses, corporations, domain name investors, etc. Accredited registrars are also vulnerable to the price spike as they will need to lift their fees in order to stay profitable. Yet, it should be noted that the extent of harm is going to vary, with registrars and domain investors being affected the most, while the majority of users that consist of registrants maintaining only a few domain registrations will barely feel the price hike.

Conclusion

The extension of the Cooperative Agreement enabled Verisign to enter into talks with ICANN to amend the .com Registry Agreement and negotiate the price rise of .com registration and renewal fees. Verisign’s dominant position on the TLD market along with the impact that the price hike will have on all stakeholders within the ICANN community will certainly attract the attention of the global stakeholder community and stir up many debates. How ICANN will manage to reconcile the conflicting interests between Verisign and registries on the one hand and the rest of the community on the other, is yet to be seen. Still, one thing is certain: any further move by ICANN in this matter will be subjected to close scrutiny from the community.

Authors:
Stefan Filipovic
John O’Brien

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14 December 2018
PHILIPP PLEIN V. REZON LTD - THE FIRST BULGARIAN DECISION RELATED TO LIABILITY OF INTERMEDIARIES

The Sofia City Court, Commercial Division reached a landmark decision on November 15, 2018, when it issued a judgement holding that the company REZON Ltd., which manages and operates the on-line marketplace bazar.bg, violated the rights of the trademark owner PHILIPP PLEIN. The breach occurred through the use of these trademarks in the commercial activity of the Respondent which it carries out in relation to the management of the site. As a result of this finding, the Court ordered REZON Ltd. to suspend the use of the PHILIPP PLEIN trademark. The decision is not yet final, but it represents the first case ever in which Bulgarian courts have determined the liability of an intermediary for infringement of IP rights. While the decision is not binding on other chambers of the Sofia City Court or other courts, it is nevertheless expected to encourage other trademark owners to have confidence in the Bulgarian Rule of Law and to defend their rights on the basis of similar legal arguments.

The Case

As the owner of many EUTMs, PHILIPP PLEIN filed a lawsuit against REZON Ltd. on the basis of the sale of counterfeit goods by users of bazar.bg, by means of which both natural and legal persons have used the trademarks without permission. The filing of the case was preceded by a number of take-down notices filed on behalf of PHILIPP PLEIN, but ultimately, the Respondent refused to comply with the take-down notices and numerous additional letters which were sent.

The matter at issue is focused on the role of publishing ads for the sale of goods, namely whether the Respondent, in its role of site administrator, controls the information and maintains filters for it, or whether its activity is purely technical and has a "passive" character, i.e. does it have control over the stored information and the data in the sales ads published by third parties. In determining that, the court had to answer whether REZON Ltd. provides "optimization" support for the presentation of the proposed sales on the site.

The Court found that the Respondent did in fact assist certain users in the presentation and advertising of their proposals for the sale of counterfeit goods on the grounds of the following facts:

1. In the General Terms and Conditions of bazar.bg, there is a prohibition of the publication of sales announcements for electronics that are "replicas," and such advertisements will be removed ex officio. However, such prohibition is missing for other goods. This excludes the "passive" role of REZON Ltd., and it was obvious to the Court that the company not only has control over the published information but also has the resources to exercise it.

2. It has been proven that the Respondent receives detailed information from the delivery company about the sales made.

3. REZON Ltd. provides bonus points to persons who have posted sales announcements, if a sale is made. Until recently, the bonus points have been paid in cash, and then advertising services are provided as compensation.

4. Certain advertisements which are paid and based on this service are published as VIP or TOP, which proves the optimization of the way the adverts are presented; this is contrary to the Respondent’s claim of having a passive role.

Based on these factual findings, the Court held that the conduct of REZON Ltd. can also be treated as "advertising of goods or services," which is in accord with the Applicant’s allegations. Furthermore, the Court entirely dismissed the Respondent’s defense, based on Article 14 of Directive 2000/31/EC (e-Commerce Directive) by which Respondent was allegedly only hosting ads and had no actual knowledge of infringements, and ultimately ruled in favor of PHILIPP PLEIN.

Impact

This case is the first of its kind to be dealt with in Bulgaria and will have a significant impact on subsequent similar cases. This is, of course, in accord with the European Union law and practice, and such consistency reinforces confidence in the Bulgarian legal system. Should this or a future case reach the Supreme Court of Bulgaria, it may facilitate the formation of binding caselaw to provide the necessary degree of protection for trademark owners when counterfeits of their goods are being sold online.

This article was first published on Kluwer Trademark Blog.

Authors:
Velislav Dramov
Milan Milojevic
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11 December 2018
SUNRISE PERIOD FOR NEW .RS DOMAIN NAMES WITH IDN CHARACTERS
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On November 27, 2018, the Serbian ccTLD authority (Serbian National Internet Domain Registry - RNIDS) announced the start of a new sunrise period for registration of domain names under .rs country code top level domain (ccTLD).

This sunrise period will last from noon on December 10, 2018 until noon on March 5, 2019, and it will concern registration of domain names that contain specific IDN characters (IDN – Internationalized Domain Name). These domain names are specific because they contain at least one character that is displayed in language-specific script or alphabet, unlike standard domain names which are completely based on ASCII characters (ASCII - American Standard Code for Information Interchange).

In particular, characters from Serbian, Albanian, Bosnian, Croatian, Czech, German, Hungarian, Montenegrin, Romanian, Romany, Slovak, Slovene and Vlach languages will be supported by these new domain names. IDN characters whose registration will be allowed are provided in the table below along with their ASCII equivalents.

The key rules of this sunrise period are the following:

- Within the sunrise period, domain names with new IDN characters are allowed for registration only to registrants of existing .rs domain names;

- Registrants of .rs domain names that register a standard domain name under .rs ccTLD within the sunrise period are also entitled to request registration of domain names with new IDN characters;

- Registrants of existing .rs domain names may register only domain names in accordance with the rule “one ASCII character – one IDN character”. This means that even if some specific letters are commonly represented by several ASCII letters (for example “Š” as “SH” or “Č” as “CH”), benefits of early registration will not be extended to the representation of several letters with one IDN character;

- There is no explicit limitation on the number of IDN characters that new domain names may contain. However, the amount of these characters is objectively limited by the number of ASCII characters that may be converted into IDN characters. This rule applies, of course, only during the sunrise period, and upon the expiration of the same, registrants are not bound by existing domain names but are free to choose whichever domain name they like;

- New domain names containing IDN characters must be registered with the same registrar with which the existing .rs domain name is registered;

- Fees for registration of domain names with new IDN characters will be the same as fees for registration of standard .rs domain names (such as .rs, .co.rs, .org.rs, .in.rs, etc.).

The specific “one ASCII character – one IDN character” rule means that only one ASCII character can be replaced with one IDN character that is considered to be its equivalent. For example, a registrant of the domain name shkola.rs during the sunrise period may only benefit from early registration of the domain šhkola.rs, but not from registration of the domain name škola.rs (“Škola” is the Serbian word for “school”). The reason for this is that although the characters “s” and “h” in ASCII code make the phonetic equivalent of “š”, only the character “s” from ASCII is considered to be equivalent to “š” for the purposes of this sunrise period (as it can be seen from the table above).

Upon the expiry of the sunrise period, .rs domain names with new IDN characters will be free for registration by all interested parties.

In addition, upon the expiry of the sunrise period for .rs domain names, a new sunrise period for .срб domain names with new IDN characters will be launched on noon March 5, 2019. As .срб ccTLD represents a Cyrillic IDN, this means that new Cyrillic IDN characters will be introduced. So far, under this IDN it was possible to use only Cyrillic characters from the Serbian language, while the introduction of new IDN characters will allow use of characters from other languages that use Cyrillic characters, such as Russian, Macedonian, Bulgarian, etc.

To conclude, the introduction of new IDN characters will definitely broaden the freedom of choice for potential registrants and may consequently lead to an increase in the number of registrations (currently, a little over 100.000 domain names are registered under .rs ccTLD). Yet, it remains to be seen whether the phrase used by RNIDS in promotion of this sunrise period (From December 10 .rs domain will be worth more) will indeed be true.

Author: Stefan Bojović
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30 November 2018
MSA IP ORGANIZES SEMINAR IN SERBIA ON PROTECTION OF INTELLECTUAL PROPERTY RIGHTS

On 28 November 2018 MSA IP organized a seminar in its offices in Belgrade, Serbia on the issue of protection of intellectual property rights. The seminar was attended by more than 30 representatives of local businesses who were interested to learn from MSA IP attorneys about current regulations and practice in Serbia.

After welcome speeches from MSA IP partners Milan Milojevic and Vuk Sekulic, attendees heard presentations on four different topics: Mirjana Saric spoke about protection of trademarks and designs; Jelena Pribic’s presentation focused on patents; Milos Bogdanovic gave insight on anti-counterfeiting activities; finally, Vuk Sekulic spoke about protection of IPRs before courts in Serbia and gave some interesting examples from MSA IP’s rich practice.

The seminar was organized with support of Swiss-Serbian Chamber of Commerce (www.sscc.rs) and AmCham Serbia (www.amcham.rs).
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10 April 2018
VUK SEKULIC PARTICIPATES IN THE 23rd EUROPEAN FORUM OF THE INTELLECTUAL PROPERTY ORGANIZED BY UNIFAB

On 5 and 6 April 2018, MSA partner Vuk Sekulić participated in the 23rd European Forum of the Intellectual Property organized by UNIFAB, the French anti-counterfeiting organization that gathers more than two hundred firms and professional federations from many brands of activities. The intense two-days meeting took place in the Pavillon Dauphine in Paris and was attended by more than 300 people coming from the political, economic and legal world.

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27 March 2018
CCTLD VOGUE.SK RECOVERED IN HISTORICALLY FIRST ADR PROCEEDINGS IN SLOVAKIA

The first domain name ADR proceedings took place in Slovakia since introduction of the procedure in September 2017. The case involved a dispute over the domain name (vogue.sk). The complainant – publishing company Les Publications Conde Nast S.A. owner of the VOGUE trademarks - sought the transfer of the disputed domain name against the respondent – Slovak company SYKORAH s.r.o. The Panel of Experts decided in favour of the complainant and ordered the transfer of the domain name.

The disputed domain name was originally registered by an individual who transferred the domain name to the respondent before the ADR procedure was initiated. The previous holder is an executive and shareholder of the respondent. The domain name was previously redirected to a website containing presentation of a fashion line developed by the wife of the previous holder who is also an executive and shareholder of the respondent.

The complainant invoked its prior VOGUE trademarks identical to the disputed domain name and demonstrated their extensive use worldwide, inter alia, by referring to its other domain names containing mark VOGUE. Furthermore, the complainant claimed that VOGUE trademarks also have a reputation among the relevant part of public in Slovakia and with this respect referred to a number of UDRP decisions, in which panels recognised that VOGUE trademarks are well known or famous.

The respondent failed to respond but in previous correspondence argued that he had not been aware that registration and use of the disputed domain name could infringe the complainant’s VOGUE trademarks and that at the time it was registered the idea was to use the French translation of the word “fashion” in the domain name.

Nonetheless, the Panel of Experts held in its decision that the disputed domain name is identical to the VOGUE trademarks, which have sufficient distinctive character with regard to relevant public, while the average Slovak consumer probably will not recognize the meaning of the word mark “vogue” either in French or English language, and the disputed domain name was at least for a certain period of time used in connection with the same or very similar goods and services, for which VOGUE trademarks are registered.

The Panel subsequently concluded that the respondent lacked legitimate interest and registered and used the disputed domain name in absence of good faith. The former was implied from the fact that the respondent did not assert any right which could serve as a basis for his legitimate interest in the disputed domain name. With regard to the latter, the Panel concluded that the conduct of the previous owner can be attributed to the respondent due to the existing personal link. Lack of good faith consists in use of the disputed domain name to attract online traffic for the respondent’s website advertising competing services, i.e. for the purpose of gaining unjustified profits from likelihood of confusion between the domain name and VOGUE trademarks.

Les Publications Conde Nast S.A. was represented by Michal Havlik, MSA IP’s associate in Slovakia.
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15 March 2018
MILAN MILOJEVIC AND VUK SEKULIC SPEAK AT THE CONFERENCE “CREATIVE SERBIA: THE FUTURE IS CREATIVE” IN BELGRADE

On 13 March 2018, Serbian Prime Minister Ana Brnabic opened the conference "Creative Serbia: the Future is Creative." The conference was organized by the Office of the Prime Minister of Serbia, as the first step towards systematic support to the faster development of creative industries in Serbia. The conference was attended by more than 250 participants, including ambassadors and representatives of international organizations.

According to the report of the World Bank presented at the conference, creative industries in Serbia represent a great economic potential, employing more than 100,000 people, of whom about 70 percent are between 25 and 44 years of age, and a large number is women. These industries have recorded a steady growth of 6.4 percent annually over the past three years and generate revenues of approximately €4.7 billion, representing 13.5 percent of national GDP. Creative industries are one of the fastest growing industries in Serbia and contribute to GDP more than some traditional sectors of our economy.

The Prime Minister highlighted the importance of creative industries in building a positive image of Serbia as a creative, innovative and digital country, which is a desirable environment for domestic and foreign talents, and at the same time an attractive destination for investors and tourists. She promised that the Serbian government will work on improving the business framework in this mandate so that the creative industries reach their full potential and achieve even faster growth.

MSA’s Milan Milojevic and Vuk Sekulic spoke at the panel on policy and legislation framework. Vuk presented on the issue of protection of intellectual property rights and stressed how important it is to have adequate mechanisms for their enforcement; he made a case for establishment of specialized IP courts in Serbia. Milan spoke about possibilities of using new technologies, such as blockchain, in protecting intellectual property rights.
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24 March 2017
MSA IP ATTORNEYS VUK SEKULIC AND MILOS BOGDANOVIC PROVIDE CONTINUED TRAINING TO SERBIAN CUSTOMS OFFICERS
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On 24 March 2017, MSA IP partnered up with Serbian Customs to provide continued training for customs officers engaged in combating the transportation of counterfeit goods at the Serbian borders. Held in Belgrade, the event was a follow-up to the previous training in November 2015 and included current counterfeiting activities, additional rights-holders who are being targeted, and updated strategies on detecting counterfeit goods.

MSA IP attorneys at law Vuk Sekulic and Milos Bogdanovic led the training with respect to two major, world-famous clothing companies. Vuk presented on behalf of Philipp Plein, while Milos apprised the customs officers of the current trends in counterfeiting Gucci products.
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24 March 2017
MSA IP ATTORNEY AT LAW STEFAN BOJOVIC SPEAKS ON SERBIAN DATA PROTECTION ISSUES AT ITIPLGE SYMPOSIUM IN VIENNA

MSA IP is a member of IT IP Law Group Europe (http://www.itlawgroup-europe.eu/), a close network of legal professionals in the areas of intellectual property law and IT law. The Group provides quality service to clients at minimal cost, matching clients to professionals who are best able to meet their needs. IT IP Law Group Europe is comprised of independent law firms across Europe who share their wide range of experience and knowledge.

On 24 March 2017, as a part of its spring meeting, the Group held a symposium on issues of implementing the General Data Protection Regulation (GDPR). The Regulation, which was adopted on 27 April 2016, is now in a two-year transition period. The purpose of the GDPR is to provide EU residents with increased data protection, especially with respect to foreign companies processing EU data. By harmonizing the existing data protection laws, the GDPR will provide a somewhat different framework for compliance, while at the same time, imposing strict penalties on non-compliance. The March 24th symposium addressed a few of the implementation issues which have been raised during the transition period.

MSA IP Attorney at Law Stefan Bojovic attended the event and gave a brief introduction on the Serbian data protection legal framework. In particular, Stefan discussed the trends in harmonizing the current legislation with the GDPR. The current framework of data protection was discussed, as well as the new model law which was introduced by the Serbian Data Protection Commissioner and which was subject to public debate until mid-April. This model-law adopts a large number of the legal solutions that are provided in the GDPR. After the public debate, it will be forward to the Government which will then decide if it will be turned into a formal proposal of law before the Parliament.

Although Serbia is not yet an EU member country, Stefan emphasized his hope that in days to come its data protection legal framework will be fully aligned with EU trends. Since the IT industry is one of the fastest growing industries in Serbia, an appropriate legal framework for data protection should be considered a necessity that will promote favorable business conditions.

The symposium was well-attended, and over 50 in-house attorneys and data protection professionals had an opportunity to share their views on the future of data protection in Europe.
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6 March 2017
MSA IP SENIOR PARALEGAL ANA SARAJCIC PRESENTS TRAINING TO CROATIAN CUSTOMS OFFICERS

On 6 March 2017, MSA IP Senior Paralegal Ana Sarajcic worked with Croatian Customs to lead a training event in Zagreb for customs officers focused on the enforcement of anti-counterfeiting in Croatia. The training focused on current trends in counterfeiting and updated methods of detecting counterfeit goods.

Ana gave a presentation on behalf of the world-famous clothing company Moncler. The training incorporated the years of experience MSA IP has acquired in fighting counterfeiting activities throughout Southeastern Europe.
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6 March 2017
NON-USE STRATEGIES: WHAT YOU NEED TO KNOW ABOUT TRADEMARK REFILING IN SERBIA

It is not a rare situation that trademarks are registered long before they are used on the market. The reasons for such preservation of rights can be different, but in all cases the holder needs some time to create conditions for placing its goods or services on the local market under the registered mark (e.g. clinical trials for pharmaceutical products, waiting for necessary licenses for starting a business locally, etc.). Non-use of a trademark for more than five years results in its vulnerability to cancellation actions. Refiling a trademark, as an instrument of extension of protection in order to keep the monopoly over the mark of interest, could be used in Serbia under certain conditions. Those conditions refer to the fact that the Serbian Trademark Law is not aligned with EU legislation and practice and that the examination of the relative grounds for refusal of trademark applications is still conducted by the IPO ex officio in Serbia. By refiling, the trademark owner avoids facing the consequences of non-use of the trademark - its vulnerability to a cancellation action -- as the non-use grace period of 5 years is renewed each time when the trademark is refiled and therefore extended.

Although the Serbian Law on Trademarks prohibits registration of marks which are identical to prior trademarks, opportunities for refiling can be found in its interpretation. According to the Serbian Law on Trademarks (Art.5.1.9), a mark shall not be registered as a trademark if it is identical to the earlier trademark for identical goods and/or services. The protection for the identical trademark registration, therefore, will be granted to the holder of the earlier trademark only if he waives his earlier trademark before the registration of the later. This approach results in the renewal of the non-use grace period of five years, which starts running again from the date of registration of the later trademark, but it also means a loss of the priority rights which were acquired by the renounced registration. This deliberate loss could be acceptable to the trademark owner because the newly registered mark could not be challenged on non-use grounds. Also, in case of need to initiate cancellation proceedings against the trademark of a competitor, based on similarity with the prior mark, that registration would be useless from the simple fact that the owner did not put it into the market and its genuine use could not be proved. Therefore, refiling is a useful instrument for maintaining the validity of a trademark which is not used on the market yet.

On the other hand, if losing the priorities of the earlier registration would be an unfavorable option, the trademark owner has at its disposal a completely different approach without renunciation of any rights. Namely, the effect of refiling could also be achieved by filing the application for the mark slightly differently from the one previously registered, but at the same time differently enough to be assessed by the IPO as not identical to the earlier one. Alternatively, this could also be achieved by filing the application for the identical mark but for goods and services which are not identical to those covered by the earlier registration. According to the Serbian Law on Trademarks (Art.5.1.10), a trademark cannot be registered if it is identical to the other person’s prior mark for the similar goods and/or services or similar for the identical goods and/or services, while the registration of the similar trademarks of the same owner is allowed. Therefore, one person could apply for a new trademark which, compared to the original, differs only in minor nuances. The owner must decide which differences are acceptable from a practical point of view. The new mark should stay close both to the mark which is intended to be really used in the future, and to the mark which is renewed. The adequately chosen later mark is the one which differs in elements, but does not alter the distinctive character of the earlier trademark, e.g. when both marks consist of the same word(s), when one is written in lower case and the other in upper case letters, or when it uses a divergent form (font) of letters. In that case, the list of goods and services can stay unchanged.

The other option would be filing an identical mark, but for a list of goods and services which uses different terms but stays within the scope of protection of the earlier mark, e.g. if the earlier mark is registered for pharmaceutical preparations in general, the later could be filed for a more specific medicine, or, if the earlier covers clothing generally, the later could be filed for specific garments or vice versa. The new application will be allowed as long as it does not cover the identical terms which are used in the list of goods and services, or if the same does not cover synonym that has identical scope of protection. Implementation of any of the strategies of refiling without quitting prior rights, by making changes in the mark or in the list of goods and services, would result in a cumulative existence of two or more trademarks of the same holder. The first trademark would still exist, though it would be vulnerable for cancellation due to non-use, while for the later trademark(s), a new non-use grace period of 5 years starts from the date of the new registration.

Unlike in EU member states where the sanction for applying for a trademark in bad faith is prescribed by the law, and where the ECJ practice instructs the interpretation that refiling might be an act of bad faith (Pelican Case T-136/11), in Serbia, a trademark cannot not be cancelled on the grounds of bad faith. Because there is no implication of bad faith and no resulting negative consequences, refiling in Serbia is a safe harbor for right holders. Having in mind all the benefits and weaknesses of the presented refiling strategies, the trademark owner can choose the one which adequately achieves its objectives. While Serbia is still in a transitional process regarding aligning its laws and practice with the EU legislation, refiling remains an available option for preventing the consequences of non-use.

Authors:
Mirjana Saric, Attorney at Law
Jelena Petrovic, Attorney at Law

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5 December 2016
SERBIA - TIME LIMIT TO FILE A TRADEMARK INFRINGEMENT CLAIM FROM THE PERSPECTIVE OF DOMESTIC COURTS

In Serbia, the filing of a trademark infringement claim is restricted by a statute of limitations. Namely, Article 74 para 1 of the Serbian Law on Trademarks prescribes as follows:

“An infringement action may be filed within a period of three years as from the day on which the plaintiff became aware of the infringement and the infringer, but not later than five years from the day of the first infringement.”

According to the this provision, an infringement claim shall be dismissed should a defendant succeed in proving that it had been conducting an infringing activity for more than three years before a plaintiff became aware of such activity and/or for more than five years before the civil action was filed. Until recently, a defendant presenting such evidence had always been able to succeed in dismissing a trademark infringement claim, which thus resulted in the inability of a plaintiff to enforce its trademark against the defendant in relation to that specific infringing activity. Even when an infringing activity was conducted in a very small scope (and as such was invisible for the trademark holder, i.e. “stealth infringement”), the Courts would still dismiss the claim on the basis of the above cited provision.

However, such practice has raised a number of issues which call for its review. Among them the following stand out for putting right holders into an unjust position:

  • Committing a stealth infringement and then waiting for the expiry of the 5-year period is a tactic any infringer may use to avoid liability;
  • If an infringing activity was temporarily ceased in response to a proper warning by a trademark holder and then continued after 3 or more years, the infringement claim would still be dismissed; moreover, such a cease and desist letter sent by the trademark holder to the infringer may be used as evidence that the action was not filed within the time limit prescribed by the Law;
  • Defendants are able to avoid liability for trademark infringement by claiming that they have infringed the same trademark in the past (!).

Once Serbian courts had become aware of the above issues, they realized that the abovementioned provision deserved a different approach, one that would be less harmful for trademark holders who did everything that was reasonably expected to preserve their rights. Thus, a recent decision of the High Commercial Court has established that expiry of the statute of limitations to file a trademark infringement claim cannot be proven by documents such as written correspondence between a plaintiff and a defendant and that an infringing activity conducted in the past must refer to the same exact manner of misuse of the plaintiff’s trademark.

Furthermore, courts are now requiring that a defendant must prove that the scope of activities conducted more than 5 or 3 years before the filing of the claim was relevant in terms of use of a mark, e.g. invoices showing sale of no more than a couple of products or providing services to only a few persons would not be considered as a relevant activity in terms of expiry of time limit for filing a trademark infringement claim.

Finally, and of particular significance, not only are the Serbian courts beginning to address these issues, but also the national legislature is preparing to introduce amendments to the Law on Trademarks. According to these amendments, the said time limit will no longer be calculated from the date of the first infringement.

Based on these developments, we believe that the future of trademark enforcement in Serbia is about to become brighter now that the issues regarding the time limits for filing trademark infringement claims are finally being addressed in a more thoughtful manner.

Author: Milos Bogdanovic, Attorney at Law

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8 November 2016
BREXIT AND IP: CAN THE EXPERIENCE FROM FORMER YUGOSLAVIA BE APPLIED?

The rather hot June of 2016 introduced a hot new story in Europe – Brexit. Voters in the referendum in the United Kingdom decided to leave the European Union (EU). Following the outcome of the referendum, one of the questions that was raised was What will happen with the EU-registered Intellectual property that is now in force in the UK? Naturally, this question primarily concerns the trademarks and designs that are duly registered before EUIPO and whose protection is extended to all current EU members (including the UK).

There is one story that might hold an answer to this question – the story of former Yugoslavia. The former Yugoslavia, as from the early 1990s, experienced a long history of fragmentation from what was once known as the Socialist Federal Republic of Yugoslavia. The first republic of former Yugoslavia to have gained independence was Slovenia, which was then followed by independences claimed by Croatia and Bosnia and Herzegovina during the civil war. On the other hand, Macedonia had a rather peaceful breakup with Yugoslavia. After the turmoil in the first half of the 90s, what had once been a great country had then become a federation of only two member-states – Serbia and Montenegro. Nevertheless, this “reduced federation” did not last long either, and Serbia and Montenegro went on their separate ways in 2006 as well. Finally, in 2008, Kosovo unilaterally declared its independence from Serbia. Yet, its independence has never been recognized by Serbia, nor has it yet been recognized by a number of countries of the world.

So, what is the similarity between the stories of Brexit and the one of former Yugoslavia? Well, in both situations a centralized intellectual property office existed, which was responsible of protection of IP rights over the entire territory covered by the particular form of association of countries (regardless of whether it was a federation or a union of independent countries). After the dissolution, the territory which was a part of an association of this kind needed to find a manner of providing continuous protection of the IP assets that had been valid before the secession.

Each of the newly formed countries listed above introduced a certain mechanism for extension of the IP rights of former Yugoslavia. Slovenia was the first to introduce so-called revalidation system. Under this system, owners of the prior rights were able to file a request for extension of such rights before the IPO, thereby preserving the priority rights from Yugoslavia. Croatia and Macedonia also decided in favor of revalidation as a mechanism for preserving prior rights. Similar mechanism was introduced in Bosnia and Herzegovina after the civil war was over.

The two most recent experiences from the former Yugoslavia – Montenegro and Kosovo – offer two mechanisms for extension of protection that could be of great significance in view of the Brexit events.

The contours of possible Brexit outcomes related to the IP assets are already visible, and six different scenarios are discussed among the experts. One of them is so-called “Montenegrin scenario” which is firmly based on the system for extension of rights used in Montenegro after dissolution.

In “Montenegrin scenario”, all IP rights from the former state union that had been registered before May 28, 2008 (the date when the Montenegrin IPO became operative) automatically continued their lives as national Montenegrin trademarks. Once they matured to renewal, they were renewed as national trademarks. However, if the rights were registered after May 28, 2008, they needed to be revalidated during the non-extendable revalidation period that lasted a year (from 2010 until 2011), during which owners of industrial property rights were able to file requests for extension of the rights that had been valid in the prior common country. After the expiry of this period, all claims for the prior rights were precluded and extension of protection was no longer an option.

Of course, the mechanism of revalidation and continuation of effect was mutatis mutandis applied on the industrial property rights that were registered in former Yugoslavia via international treaties (PCT, EPC, Madrid system and Hague system).

The right holders that had duly revalidated their rights in Montenegro succeeded in preserving priority rights and the new registrations in Montenegro were “fingerprints” of the Yugoslavian registrations. This was particularly significant for those prior rights for which novelty was one of the conditions for obtaining protection (patents and designs), since failing to preserve the old priority would very likely lead to total loss of protection in the new jurisdiction.

On the other hand, when the separate IP protection system was introduced in Kosovo, the only way to preserve prior rights was to revalidate former Serbian trademarks during the 1-year revalidation period (from November 2007 until November 2008). Therefore, there was no mechanism that would enable an automatic extension of the prior rights, and the only option was revalidation. This system is, in fact, based on Slovenian revalidation system (which was later used in Croatia, Macedonia and Bosnia and Herzegovina with certain alterations). If we would use Brexit terminology this system would be the closet to the so-called “Tuvalu Scenario”.

The aforementioned experiences could be crucial in determining the destiny of EU IP rights in the United Kingdom. Namely, a certain period of time (e.g. 1 year) for revalidation of EU trademarks and designs would be necessary in order for all right holders to be able to preserve their rights and extend them to the UK. As we have already mentioned, this would be of key importance for RCDs, which are affected by the condition of novelty (and expiry of the date in which the priority could be established).

However, the question of use of the EUTMs would be an additional problem, which would need to be negotiated between the EU and the UK. For instance, revalidated trademarks in the UK could have a fresh start and gain a fresh non-use grace period, which would commence one day following the date of revalidation. In such case, the relevant territory for use would fall under a national trademark law and controversy regarding the same would not occur.

On the other hand, a reverse situation would raise a number of questions. If there was an EUTM which is outside of the non-use grace period and used solely in the UK territory, the question would be whether such use should be deemed as genuine use in the relevant territory. It is our belief that in such case, it would be necessary to introduce special provisions which would recognize the use in the UK as genuine use, prior to the final dissolution and for a certain period after the same (again, a 1-year period should be a good solution). Any other solution that would not recognize the use in the UK would be rather unfair for the right holders.

Bearing all this in mind, it seems evident that various models of extension of IP protection used in the countries that had been a part of former Yugoslavia might become a valuable guideline for the post-Brexit UK and the EU negotiations.

Author: Stefan Bojovic, Attorney at Law

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12 October 2016
MACEDONIA CANCELS ADR ARBITRATION FOR DOMAIN NAME DISPUTE RESOLUTION

As from January 2016, trademark owners have been unable to efficiently enforce their rights infringed by domain name registrations in Macedonia. The ADR arbitration for domain name dispute resolution regarding the Macedonian country code top level domain names (.mk, .com.mk, .inf.mk, etc.) has been cancelled. Until January these disputes were handled by the Macedonian domain name registration authority (MARnet), but sadly, this mechanism was never widely used.

The Decision on cancellation of MARnet’s ADR arbitration stipulates that future domain name disputes will be handled by competent courts. Such a solution might be controversial, since in practice trademark infringement proceedings before courts usually last long and outcomes in this type of disputes are rather uncertain. A court case law in this matter does not exist and it remains to be seen whether this solution will be efficient in practice.

It is not impossible that resolution of future domain name disputes will be delegated to WIPO Arbitration and Mediation Center. After all, this mechanism has been already used by several countries in the region (Montenegro, Romania, Moldova etc.) for resolving disputes that involve their national domains.

The ADR proceedings have offered a time and cost efficient mechanism for resolving this type of issues, while standard court proceedings show a rather large number of deficiencies (long period of time for resolving the matters in the first instance, high costs, identity or similarity of infringing use with goods and services for which the trademark is protected – this issue is especially problematic for parked domains, domains without any content etc.). The aforementioned issues might be discouraging for the trademark owners whose rights are infringed by domain name registrations, as enforcement of their rights would be less than easy.

The first effects of this decision are already visible. The number of potential bad faith registrations has significantly risen since January. Absence of an efficient protection mechanism can certainly encourage cybersquatters, and it is quite possible that this trend will continue in future.

There is a number of countries in the region that lack efficient national mechanisms for resolving these type of issues, but in this case we are witnessing a unique situation where a country has already constituted such authority and then inexplicably renounced the same. One might say that the Macedonian legislation regarding the domain name protection takes one step forward and then goes two steps back.

Author: Elena Bliznakovska – Mladenovska, Trademark Attorney

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26 January 2016
Montenegrin Customs Seize 12.200 Pairs of Fake Sunglasses
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On 15 December 2015, Montenegrin Customs officials in Bar, a large port in the Adriatic Sea, seized 12.200 pairs of fake sunglasses bearing the sign „Ron-Ban“, very similar to the well-known trademark „Ray-Ban“. The fake goods were seized during an inspection of a container coming from China.

The trademark owner Luxottica Group S.p.A., who is represented by MSA IP, applied for destruction of seized goods under „simplified procedure“ and the application was subsequently granted by Montenegrin Customs.

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20 November 2015
MSA IP Attorneys Vuk Sekulic and Milos Bogdanovic Give Training to Serbian Customs Officers
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On 20 November 2015, Serbian Customs organized a training event in Belgrade for Customs officers who are responsible for anti-counterfeiting activities. The event was an opportunity for IP rights-holders to educate Customs officers in the detection of counterfeits.

MSA IP attorneys Vuk Sekulic and Milos Bogdanovic gave training on behalf of world-famous clothing companies Lacoste and Moncler, as well as Eli Lilly and Company, a US global pharmaceutical company whose product “Cialis” is often targeted by counterfeiters.

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21 September 2015
MSA IP Partner Milan Milojevic Speaks at the INTA Round Table in Belgrade

On 21 September 2015, MSA IP partner Milan Milojevic spoke at a round table organized in Belgrade by INTA, Chamber of Commerce of Serbia and Serbian National Internet Domain Name Registry under the name „Application of the Regulation on the Protection of Intellectual Property Rights”. The roundtable has discussed practical problems in implementation of the new Serbian Regulation on the Protection of Intellectual Property Rights from the perspective of brand owners, Customs and other state authorities, as well as other players (e.g. Internet platforms). In his role as Chair of INTA’s Anti-Counterfeiting Subcommittee for Eastern Europe and Central Asia, Milan has offered insight from the perspective of brand owners and shared his experience from other countries in the region.

Milan has extensive practical experience of regional trademark protection and enforcement, having managed cases in the region for some of the world's leading companies. His work includes trademark searches, filing and portfolio management. He has substantial experience with prosecution matters and oppositions before national Trademarks Offices and before OHIM, and he also advises on infringement and unfair competition matters. Milan is an active member of INTA where he is currently sitting as Vice-Chair of the Enforcement Committee.

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20 July 2015
Serbian Court Delivers First Judgment in a Parallel Import Case

On 22 April 2015, the Court of Commerce in Belgrade, Serbia, rendered a judgment in a trademark infringement dispute between the plaintiff Bacardi & Company Limited, the owner of famous brands of alcoholic drinks BACARDI, BACARDI BREEZER, MARTINI, DEWAR’S, OAKHEART, GREY GOOSE, BOMBAY SAPPHIRE and ERISTOFF, and the defendants Videx d.o.o. and Videx Group Distribution d.o.o., Serbian companies who were distributing branded goods without Bacardi’s authorization. Bacardi was repesented by MSA IP partner Vuk Sekulic.

This was the first decision of a court in Serbia concerning parallel imports after the Serbian parliament adopted, on 30 January 2013, amendments to the Law on Trademarks of 2009 and introduced, for the first time, a ban of parallel imports. Instead of the regime of international exhaustion for trademarks, Serbia has then adopted the regime of national exhaustion. During the parliamentary discussion about the proposed amendments to the Law on Trademarks, the then Serbian Minister of Science and Education Žarko Obradović stated as follows: “Instead of the principle of international exhaustion of rights which is adopted in the current version of the Law, the changes in the Law introduce the principle of national exhaustion of rights under which the so-called “parallel imports” are not allowed. The exhaustion is limited to situations where the rights-holder first puts goods into circulation within the territory of the Republic of Serbia, and not outside of its borders. This provides better legal protection of rights-holders and control over sales of trademarked goods. The ban of parallel imports prevents unfair competition which exists where parallel imports are allowed. The principle of national exhaustion of rights is compatible with the system which exists in the EU.” Therefore, the new regime provides for a stricter control by rights-owners of their branded goods as they can now take trademark infringement action not only against counterfeit goods, but also against gray market goods.

The Court ruled in favor of Bacardi and established that the defendants had infringed Bacardi’s trademarks by importing, distributing and advertising, without authorization from Bacardi, the BACARDI, BACARDI BREEZER, MARTINI, DEWAR’S, OAKHEART, GREY GOOSE, BOMBAY SAPPHIRE and ERISTOFF products after 7 February 2013 (this was the day when the new Law on Trademarks which prohibited parallel imports came into force). The defendants were forbidden to import and distribute these products without authorization from Bacardi. They were also ordered to withdraw from the market, within 8 days as from the day when the judgment becomes final, all such products that they imported and placed into circulation after 7 February 2013 and to subsequently destroy them. Finally, they were ordered to publish the judgment in daily newspapers “Politika” and “Blic” and to pay Bacardi’s legal fees and expenses. The defendant’s didn’t file an appeal against the judgment.

The regime of national exhaustion of trademarks, under which parallel imports of branded goods are not allowed, has already been introduced in a number of countries in the region, namely in Montenegro (Article 15 of the Law on Trademarks of Montenegro), Croatia (Article 11 of the Law on Trademarks of Croatia), Macedonia (Article 209 of the Law on Industrial Property of Macedonia), Kosovo/UNSCR 1244 (Article 12 of the Law on Trademarks of Kosovo), Slovenia (Article 50 of the Law on Industrial Property of Slovenia) and Albania (Article 158 of the Law on Industrial Property of Albania).

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20 March 2015
MSA IP Partner Vuk Sekulic Speaks at the INTA Round Table in Rome
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On 20 March 2015, MSA IP partner Vuk Sekulic spoke in Rome to an audience of more than 30 Italian in-house counsels and trademark attorneys at a round table organized by INTA and Akran Intellectual Property under the name „Counterfeiting and Counter Fighting in Southern Europe: The Latest IP Tools and Industry Best Practices”. The roundtable has discussed the fight against counterfeits with special focus on Southern Europe and the neighboring Balkans as a gateway for counterfeits in Europe. Vuk has offered insight on the importance of the Balkans in the fight against counterfeits and on the measures that brand owners can take to protect their rights in the countries of Southeastern Europe.

Vuk is an experienced litigator who has been involved in a number of high-profile trademark disputes in the region that have led to landmark decisions on important issues, such as parallel imports and protection and infringement of famous trademarks. He has represented a vast number of clients, including large multi-national companies, in all aspects of trademark protection, management and enforcement in the region of Southeastern Europe. He has participated in and supervised legal actions against counterfeits, pirated goods and other Intellectual Property infringements, both before courts and through the use of administrative actions.