German Pet Food Manufacturer Wins Bad Faith Trademark Case against Serbian Company

On December 15, 2011, the Commercial Appellate Court in Belgrade, Serbia ruled against the Serbian pet food importer and producer who registered and used two trademarks belonging to its business partner, the German company Gimborn, which manufactures and distributes various brands of cat, dog and small animal food and care products. The Commercial Appellate Court thus upheld the 2010 first-instance ruling of the Commercial Court in Belgrade.

In 2003, the defendant, the Serbian company, registered trademarks Gimpet (No. 49583) and Gimborn (No. 49584) with the Serbian IPO, in the same Class 31 in which the plaintiff, the German company, registered international trademarks under IR No. 591166 (Gimborn) in 1992 and IR No. 506326 (Gimpet) in 1986. The plaintiff’s marks, however, did not gain protection in Serbia until 2007, following a request for subsequent designation.

During court proceedings, the plaintiff argued that he had been using the trademarks in commerce all over the world, including the former Yugoslavia, later Serbia and Montenegro and then Serbia, to mark Class 31 products, long before the defendant’s registration of the infringing marks with the Serbian IPO in 2003. The plaintiff also argued that the defendant knew the plaintiff was using identical or highly similar marks in Serbia as the defendant started buying, importing and selling plaintiff’s products on the territory of Serbia and Montenegro in 2001. The plaintiff thus accused the defendant of intentionally taking unfair advantage of the reputation of the trademarks.

Even though the plaintiff’s trademarks were entitled to protection within Article 6bis of the Paris Convention for Protection of Industrial Property (well-known marks), the plaintiff refrained from providing evidence for determining whether the marks are well known, as the plaintiff believed the legal basis for the case is contained in Article 66 of the local trademark law.

The defendant argued that he had been producing his own pet food with brand names Gimborn and Gimpet since 1993. He emphasized that the plaintiff’s trademarks were not registered and protected on the territory of Serbia in 2003, when the Serbian IPO granted him the registrations. The defendant also challenged the plaintiff’s argument according to which the defendant wanted to take advantage of the plaintiff’s reputation, by claiming that in Serbia very few pet owners feed their pets industrially prepared pet food. The defendant stressed that the plaintiff did not show that the marks are well known.

The court took into consideration the similarities between the goods involved, the similarity of the marks as well as the correspondence the two parties exchanged in the period 2001-2004, which proved that the parties were involved in a business relationship when the defendant filed an application for the registration of the two marks in 2003. The court therefore ruled that the defendant knew about the existence of the plaintiff’s marks and that the defendant registered them and used them in bad faith. The court ordered the defendant to pay the plaintiff’s lawsuit fees in the amount of approximately EUR 1,500 (USD 2,000).

The court based its decision on Article 66 of Serbia and Montenegro’s Law on Trademarks (Official Gazette No. 61/2004 and 7/2005) which states that if a trademark is filed in bad faith, the rightful owner can ask for the mark to be transferred into his/her name.

On April 27, 2010, the defendant filed an appeal with the Commercial Appelate Court, but the court upheld the previous 2010 ruling. The final court decision entered into force on February 20, 2012.

Author: Jelena Jankovic

For more information, please contact serbia@petosevic.com.

Source: The court decision; DS PETOSEVIC