World Trademark Review recently published the 2019 edition of their annual WTR 1000 guide, a publication that ranks the best trademark firms and individual practitioners from 70 jurisdictions worldwide. MSA IP and its partners Milan Milojevic and Vuk Sekulic have again been acknowledged by the publication.

The directory states that MSA IP offers cradle-to-grave branding support across southeast Europe from nine dynamic offices. MSA IP is praised for “working intimately with brand owners to better understand their business needs and craft portfolio management strategies that will weather any storm”, and also for “regularly [lobbying] government authorities for stronger anti-counterfeiting legislation and greater resources in the fight against forgers”.

The directory also singles out MSA IP partners. Milan Milojevic is lauded as a „pharmaceuticals whiz who knows the industry regulations inside out“. Vuk Sekulic is described as having „a track record of precedential decisions on issues such as parallel imports” and praised for being active in domain name disputes.To read the full commentary about the 2019 WTR 1000 rankings, click here http://www.worldtrademarkreview.com/wtr1000/.

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).

Shortly after MSA IP joined Swiss-Serbian Chamber of Commerce (www.sscc.rs), MSA IP partner Vuk Sekulic was invited to give presentation of the firm at the Chamber’s reunion held on 31 October 2018.

Vuk used the opportunity to provide an overview of MSA IP’s activities and organization, as well as to talk about protection of IPRs in Serbia. He also answered several interesting questions from the audience, notably on the issues of counterfeiting.

The Milojevic Sekulic & Associates (MSA IP) Law Office was founded in 2012. Milan Milojevic and Vuk Sekulic decided at the time, together with a group of colleagues from across the region, to leave another well-established intellectual property law firm to start their own firm. At the beginning, it was only a few of them in the Belgrade office and not more than a dozen in the region in total.

– The first few years were very difficult because, in addition to the day-to-day work on our clients' files, we had to work hard to build the organization in the entire region of Southeast Europe and to attract clients. However, through our adversity we managed to build a sense of community and camaraderie that is now passed on to new colleagues who are joining the firm – Milan Milojevic emphasizes in his interview with eKapija, whereas Vuk Sekulic reminds that the idea behind the establishment of MSA IP was to provide the best possible service for clients, on one hand by providing a more motivating working environment for smart, talented lawyers and paralegals, and, on the other hand, by being highly proactive in working alongside clients to better understand their needs and to offer the best possible solutions in a complex and constantly changing environment.

– Today, six years later, we are happy to say that we have succeeded in achieving this. The evidence of that is not only in the constantly growing number of clients and cases that we are working on, but also the fact that today we have more than sixty people in our head office in Belgrade and close to a hundred in the region in total. In addition to all the countries of the former Yugoslavia, we have our own offices in Albania and in Bulgaria, however through a network of affiliated offices we cover the entire region of Southeast Europe and, as of lately, even the countries of the former Soviet Union – Sekulic says.

eKapija: Your main field of activity is intellectual property protection. How did you decide to specialize in it?

Vuk: Even as a kid, I had a vague idea of what intellectual property was. In the comic books that I had drawn, I had always put a C in a circle, a symbol of copyright protection, although I had incorrectly spelt the word copyright as "copryght". During my studies at the Faculty of Law in Belgrade, I became interested in intellectual property law; however, I had taken a different path after graduation and for many years practiced mostly criminal law. Luckily, Milan, who was my friend from high school, had invited me to join the firm where he was working at the time, and thus my career in intellectual property law would officially commence.

Milan: My fascination with intellectual property, and trademarks in particular, also started when I was a child and, interestingly, with a Swiss brand. My father, who was a film producer, would bring back from his travels the famous Lindt chocolates which always had an ideal, rather dreamlike quality for me. I was attracted to their packaging and how unique and different it was compared to the packaging used by other chocolate manufacturers. I was very happy when I had been given an opportunity to practice intellectual property law and to be engaged in civil legal conflicts involving that type of work.

eKapija: What type of activity is the most frequent - protection of trademarks, patents, design, copyright, IT rights...?

Milan: MSA IP is a boutique law firm which specializes in prosecution, litigation and enforcement of all types of intellectual property rights. Some of those rights, like trademarks and patents, require registration to enjoy protection; others, like copyright, exist by mere fact of creation of a work of authorship. For that reason, most of our work is focused on rights that need to be registered because the process of registration requires prior clearance of rights, preparation and filing of applications for registration, resolving of conflicts that arise after applications are filed and renewal of rights. We also dedicate a lot of effort to anti-counterfeiting activities, which typically affect trademarks. I would therefore say that our work mostly concerns trademarks, closely followed by patents, but we of course also deal with all other types of rights concerning Intellectual Property.

eKapija: Who are your biggest clients?

Vuk: Our clients range from large multinational companies to very small local businesses, which come from very mixed industries, such as pharma, automotive, food and beverage, fashion and various others. This variety makes our job so interesting, since the requirements typically differ very much from one industry to the next, and of course also from large to small clients. We are privileged to have an opportunity to represent some of the world's most famous brands, like Nestlé, Novartis, Lacoste, Philip Morris, BMW, Gucci, Moncler, Ferrero and Hewlett-Packard, to name just a few.

eKapija: What is the field of intellectual property like in Serbia and Southeast Europe? In which sectors/industries is intellectual property most jeopardized?

Vuk: The importance of the region of Southeast Europe for intellectual property rights holders, particularly multi-national companies, lies in the fact that it represents a large and continuously growing market of, at present, approximately 80 million people. Moreover, being the "Southeast gate into Europe", it has become an important port of entry of counterfeit and pirated goods into the EU. Serbia is at the heart of the region and has a long history of protection of intellectual property rights. The Kingdom of Serbia was one of eleven original signatories of the Paris Convention for the Protection of Industrial Property of 1883, which was one of the first intellectual property treaties and which is still one of the main instruments for protection of intellectual property rights worldwide. However, during the second half of the 20th century intellectual property was a bit neglected, but that is now changing. Countries in the region are either already EU members or aspire to join the EU; consequently, they have, with more or less success, adjusted their laws and regulations to fall in line with equivalent EU laws and regulations. Also, the governments are constantly increasing their efforts to improve the environment for the successful protection of intellectual property rights.

Milan: In our experience, the industry that is most affected by infringements of intellectual property rights is the industry of luxury goods, such as clothes and footwear, fragrances, watches etc., although in some other industries – for example, pharmaceutical, automotive and food and beverage – trading with counterfeit products can result in much more serious consequences, as such products pose a significant risk for health and safety of consumers.

eKapija: Where can things be improved the most?

Milan: Although there have been some advances in that respect, there's still a lot of room for improvement in the work of the courts. Intellectual property is a very particular area of law, which requires specialized knowledge and experience. For that reason, we are actively lobbying for establishment of special intellectual property courts which would deal only with these types of matters.

eKapija: Which Swiss values do you implement in your operations?

Milan: We represent many Swiss companies, or multinational companies with headquarters in Switzerland, and our employees have had many opportunities to interact with Swiss people, either during business travels to Switzerland or by welcoming our Swiss clients and colleagues in Serbia and in other countries where we operate. During those interactions we've never felt anything but deep appreciation for Swiss values, which we also try to implement in our day-to-day work. I also need to say that the nature of our work requires exact precision, reliability, high quality and punctuality, which are all Swiss values, and therefore for us they come naturally.

eKapija: What are your plans for the upcoming period?

Vuk: Our plans are, essentially, to continue growing and to provide even better services to our clients. We would also like to see many young and educated people joining our firm and contributing to its success, and the firm giving them chances for professional development.

Milan: Fueled by technological changes, the intellectual property rights sector is rapidly changing and is moving away, in significant part, from traditional law firms to service providers who are able to provide quicker and more cost-efficient solutions to owners of intellectual property rights. We have already started to adapt to those changes and in the upcoming period our biggest challenge will be to keep up with the developments. I am sure that we will be successful in that.

The interview is available online at https://www.ekapija.com/en/news/2297465/sstk-prica-o-uspehu-luksuzna-roba-najvise-pogodjena-povredama-prava-intelektualne-svojine

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.

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.

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.

On 8 February 2018, the International Law Office (ILO) and Lexology announced the winners of the 2018 Client Choice Awards. MSA IP partner Milan Milojevic received the award for Intellectual Property in the category of Trademarks. This is Milan’s third win, after already coming on top in the same category in 2015 and 2017.

Since 2005, the Client Choice Awards have recognized partners who have added real value to their clients’ business by providing excellent client service that goes above and beyond their peers. The awards survey senior corporate counsel, and winners are selected from more than 2,000 individual client assessments.

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 EUIPO, and he also advises on infringement and unfair competition matters. Milan is an active member of INTA where he is currently sitting as Chair of the Enforcement Committee.

About ILO

Launched in 1998, ILO is the nexus where global corporate counsel engage with the world’s pre-eminent law firms, and each other. ILO is a multifaceted online resource for senior international corporate counsel, which provides tailored, quality-assured updates on global legal developments, a database of the world’s major deals and the legal advisers involved, and a comprehensive directory of firms and partners. Recognizing its unique relationship with global corporate counsel, many of the world’s premier associations have chosen to partner with ILO.

About Lexology

Launched in 2007, Lexology is a daily newsfeed of law firm client alerts, articles and blogs delivered to the desktops of senior business lawyers worldwide on a daily basis. Lexology has built a unique audience of over 260,00 subscribers, over 60% of whom are in-house corporate counsel representing the vast majority of Fortune 500, FT Global 500 and FT Euro 500 companies—including all members of the Association of Corporate Counsel.

MSA IP has received the International Organization for Standardization (ISO) 9001:2015 certification.

The seal of business excellence demonstrates “the ability to consistently provide products and services that meet customer and regulatory requirements,” according to the ISO website.

MSA IP has passed the accreditation process and attained its ISO 9001:2015 certification as the firm successfully complied with the requirements for quality management systems.

The ISO 9001:2015 is internationally recognized as the world’s leading quality management standard and has been implemented by over one million organizations in over 170 countries globally.

On Friday, 28 April 2017, MSA IP was joined by colleagues, clients, and friends from around the world to celebrate its five-year anniversary. The party was held at the Promenade on Belgrade’s waterfront.  MSA IP partners Milan Milojevic and Vuk Sekulic spoke at the event, as well as guest speaker Myrtha Hurtado Rivas, Global Head of Trademarks and Domain Names at Novartis International AG.  Following dinner, guests were treated to live music from „Makao“ and MSA’s own band “Subsequent Designation” formed from several talented members of MSA IP.

MSA would like to thank everyone whose continued support over the years helped make this milestone possible.  The celebration provided an opportunity to gather with long-term clients and colleagues, and many newer members of the MSA community were able to meet for the first time.  MSA IP looks forward to providing another five years of quality legal services.

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.

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.

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.

On 9 February 2017, the International Law Office (ILO) and Lexology announced the winners of the 2017 Client Choice Awards. MSA IP partner Milan Milojevic received the award for Intellectual Property in the category of Trademarks. This is Milan’s second win, after already coming on top in the same category in 2015.

Since 2005, the Client Choice Awards have recognized partners who have added real value to their clients’ business by providing excellent client service that goes above and beyond their peers. The awards survey senior corporate counsel, and winners are selected from more than 2,000 individual client assessments.

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.

About ILO

Launched in 1998, ILO is the nexus where global corporate counsel engage with the world’s pre-eminent law firms, and each other. ILO is a multifaceted online resource for senior international corporate counsel, which provides tailored, quality-assured updates on global legal developments, a database of the world’s major deals and the legal advisers involved, and a comprehensive directory of firms and partners. Recognizing its unique relationship with global corporate counsel, many of the world’s premier associations have chosen to partner with ILO.

About Lexology

Launched in 2007, Lexology is a daily newsfeed of law firm client alerts, articles and blogs delivered to the desktops of senior business lawyers worldwide on a daily basis. Lexology has built a unique audience of over 260,00 subscribers, over 60% of whom are in-house corporate counsel representing the vast majority of Fortune 500, FT Global 500 and FT Euro 500 companies—including all members of the Association of Corporate Counsel.

MSA IP won the Corporate INTL Global Award 2016 as the IP Enforcement Law Firm of the Year in Serbia.

Since 2005 Corporate INTL has been leading the way connecting business leaders, financiers and advisers around the world. Running since 2008, Corporate INTL Awards promote leading firms in their chosen specialisms throughout the world. Award nominees are selected via an independent research and the shortlisted firms are then reviewed by an independent awards panel in each country with the eventual winners chosen by that independent panel.

MSA IP Serbia won the ACQ awards in three categories: Intellectual Property Law Firm of the Year, Leading Client Care Law Firm of the Year and Gamechanger of the Year (Intellectual Property), while MSA IP Macedonia won in two categories: Patent & Trademark Law Firm of the Year and Customer Service Law Firm of the Year.

Over the last 11 years, ACQ (Acquisition Finance) magazine has established itself as the leading monthly title for the M&A advisory community, requested by over 106,000 senior executives in the market and providing them with a regular snapshot of industry activity that has taken place around the world. Since 2008, the ACQ GLOBAL AWARDS have been celebrating achievement, innovation and brilliance in their annual awards. This is an independent nomination process with the award winners chosen by the industry itself.

MSA IP and its partners Milan Milojevic and Vuk Sekulic have again been acknowledged by the World Trademark Review in its prominent directory, WTR 1000 – The World’s Leading Trademark Professionals.

The directory recognises MSA IP for its committment to proactivity and transparency. MSA IP is praised for having „formidable insight into the idiosyncrasies of the local trademark system“ which „results in premium, bespoke solutions to clients’ problems“.

The directory also singles out MSA IP partners. Vuk Sekulic is described as „fast, responsive and possessed of outstanding knowledge” and Milan Milojevic is lauded as a „prominent figure in the International Trademark Association“ and a „doughty anti-counterfeiting doyen“.

Now in its sixth edition, WTR 1000 is a research directory focusing exclusively on trade mark practices and practitioners. It is published once a year to highlight the industry’s ‘leading lights’ in 71 jurisdictions around the world.

To read the full commentary about the 2016 WTR 1000 rankings, click here http://www.worldtrademarkreview.com/wtr1000/.

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.

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.

On 21 September 2015, INTA announced the appointment of new members to INTA’s Committees for the 2016-2017 term. After his long tenure in the Anti-Counterfeiting Committee, Milan Milojevic has been appointed to the Enforcement Committee where he has subsequently been selected as Vice-Chair of the Committee. Vuk Sekulic and Gorana Grubisic have been appointed to the Anti-Counterfeiting Committee, while Drago Arandjelovic has become a member of INTA Bulletin Committee.

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.

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).

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.

On 26 February 2015, the International Law Office (ILO) and Lexology announced the winners of the 2015 Client Choice Awards. MSA IP partner Milan Milojevic received the award for Intellectual Property in the category of Trademarks. The award was handed to him at the Client Choice 2015 Celebratory Dinner which took place in London on 19 February 2015.

Since 2005, the Client Choice Awards have recognized partners who have added real value to their clients’ business by providing excellent client service that goes above and beyond their peers. The awards survey senior corporate counsel, and winners are selected from more than 2,000 individual client assessments.

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.

About ILO

Launched in 1998, ILO is the nexus where global corporate counsel engage with the world’s pre-eminent law firms, and each other. ILO is a multifaceted online resource for senior international corporate counsel, which provides tailored, quality-assured updates on global legal developments, a database of the world’s major deals and the legal advisers involved, and a comprehensive directory of firms and partners. Recognizing its unique relationship with global corporate counsel, many of the world’s premier associations have chosen to partner with ILO.

About Lexology

Launched in 2007, Lexology is a daily newsfeed of law firm client alerts, articles and blogs delivered to the desktops of senior business lawyers worldwide on a daily basis. Lexology has built a unique audience of over 260,00 subscribers, over 60% of whom are in-house corporate counsel representing the vast majority of Fortune 500, FT Global 500 and FT Euro 500 companies—including all members of the Association of Corporate Counsel.