Three Interesting Matters PETOŠEVIĆ Handled in 2022

Romania – Trademark Infringement Case Involving a Pharmaceutical Company

We represented a Spanish pharmaceutical company in a court action against a leading Romanian generic drug company that was using the client’s European trademark in Romania while also obtaining a confusingly similar national trademark. We filed a lawsuit based on three different grounds – trademark infringement, revocation based on non-use, and bad-faith registration of a confusingly similar trademark. The first-instance court decided in our favor on all three grounds and the Bucharest Court of Appeal upheld the first-instance decision and dismissed the defendant’s appeal.

An important aspect of this case which the courts recognized and upheld is related to the relevant public and degree of attention. The courts departed from the prevailing position that the degree of attention in case of prescription drugs is relatively high, emphasizing that consumers can indeed be confused in terms of prescription drugs, too. In terms of bad faith, the court confirmed that pharmaceutical companies are called to act responsibly, actively and in good faith, and that therefore the defendant should have known, at the moment they filed for trademark registration, that the client’s mark was already in use on the market.

The defendant has filed a recourse before the High Court of Justice. It will be interesting to see if the recourse will pass the court’s admissibility criteria.

For more information, please contact PETOŠEVIĆ Romania Head of Office Aura Campeanu.

Ukraine – Obtaining a Well-Known Status for Energy Drink Trademark

We assisted a leading energy drink manufacturer in obtaining a well-known status for their trademark in Ukraine. After collecting the necessary evidence and conducting a market poll, we submitted our application before the IPO’s Board of Appeal. After the first hearing, the Board requested additional supporting documents, which were subsequently accepted. After the second hearing, the Board issued a positive decision regarding the well-known status in Ukraine.

For more information, please contact PETOŠEVIĆ Ukraine Associate Igor Alfiorov.

Uzbekistan – Fighting Candy Lookalikes

We have been advising a multinational confectionery manufacturer on the course of action against lookalikes in Uzbekistan, Tajikistan, Kazakhstan and Kyrgyzstan. Our advice is based on our own investigations and on reports from the client’s regional representatives. In 2022, we undertook the following actions:

• Legal actions against Uzbek manufacturers of lookalike products before the Uzbek Ministry of Justice;
• Enforcement of a court ruling against an Uzbek manufacturer;
• Investigations of wholesale markets in Kyrgyzstan and Tajikistan regarding the sources of lookalike product distribution in those markets;
• Sending cease and desist and warning letters to the sellers of lookalikes and counterfeits in Kazakhstan and Tajikistan;
• Distribution of educational letters in Tajikistan and Kyrgyzstan;
• Market monitoring in three Uzbek cities.

For more information, please contact PETOŠEVIĆ Uzbekistan Head of Office Djakhangir Aripov.