24 March 2017

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.
24 March 2017

MSA IP is a member of IT IP Law Group Europe (, 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.
6 March 2017

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.
6 March 2017

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.

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

5 December 2016

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

8 November 2016

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

12 October 2016

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,,, 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

26 January 2016
Montenegrin Customs Seize 12.200 Pairs of Fake Sunglasses

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.

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.

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.

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).

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.