Ten Cases, Ten Jurisdictions: Interesting Matters PETOŠEVIĆ Recently Handled

Bosnia and Herzegovina – Infringement Case for a French Car Manufacturer

In Bosnia and Herzegovina, we recently represented a French car manufacturer in a trademark infringement case against a leading importer and distributor of spare car parts in Bosnia, who was selling products that were infringing our client’s trademarks. We approached the infringer with a cease and desist letter and negotiated a favorable outcome at a minimal cost for the client.

For more information, please contact PETOŠEVIĆ Bosnia Head of Office Tarik Prolaz.

Bulgaria – Revocation Action for a Mexican Jewelry Manufacturer

After two years of court battle, in April 2020 the Supreme Court of Bulgaria confirmed the Bulgarian IPO’s decision to revoke a Bulgarian trademark against which we filed a non-use revocation action on behalf of a Mexican jewelry and watch manufacturer. The Bulgarian trademark was retrospectively revoked as of 2011 and the client was awarded the costs of judicial proceedings.

For more information, please contact PETOŠEVIĆ Bulgaria Associate Maxim Hristov.

Croatia – Trademark Opposition for a Leading Technology Company

In Croatia, we recently represented a well-known multinational technology company in an opposition against a national application for a trademark similar to one of our client’s well-known trademarks. Apart from the likelihood of confusion, we argued that the client’s earlier mark enjoyed reputation and enhanced distinctive character. The IPO upheld the opposition and rejected the national application for all stated goods and services.

For more information, please contact PETOŠEVIĆ Croatia Head of Office Ivan Kos.

Hungary – Infringement Case for a Well-Known Electric Vehicle Company

In 2019, we successfully represented an American electric vehicle and clean energy company in an infringement case against a Hungarian company that was using our client’s trademark and copyright without authorization on their website, social media and in their trade name. A successful outcome was achived – the Hungarian company changed its name, removed all infringing content from the internet and transferred the infringing domain name to our client.

For more information, please contact PETOŠEVIĆ Hungary Head of Office Balázs Csányi.

Romania – Trademark Opposition for a Well-Known Online Marketplace

In Romania, we recently assisted an American vacation rental platform in successfully opposing a national application for a trademark similar to their well-known trademark. While the opposition based on our client’s prior trademarks and their reputation in the EU was rejected in the first instance, our appeal before the IPO’s Board of Appeal was successful and the client’s trademark was acknowledged as a trademark with reputation in the EU.

For more information, please contact PETOŠEVIĆ Romania Associate George Irimescu.

Russia – Defending Nouryon’s Patents

In Russia, we recently represented a global specialty chemicals leader Nouryon in invalidation proceedings brought against their patents in Russia and the Eurasian Economic Union by a German chemical company BASF SE. In late 2019, in their effort to independently commercialize a surfactant composition in Russia’s massive mining market, BASF filed three invalidation actions against three of Nouryon’s patents – one Eurasian and two Russian patents – which cover the surfactant in question in Russia. Following our arguments and extensive discussions during three hearings in February 2020, the Russian IPO rejected BASF’s invalidation actions. With all three patents successfully defended, Nouryon has kept the exclusive right to commercialize the surfactant in Russia and license it to third parties.

For more information, please contact PETOŠEVIĆ Russia Patent Attorney Natalia Osipenko.

Serbia – Litigation for an Oil Company

In 2018, a Swiss oil company sued our client, a Serbian subsidiary of a well-known international oil holding company, for trademark infringement. The plaintiff argued that our client’s trademark used for labelling their fuel was confusingly similar to the plaintiff’s prior trademarks. The first instance court ruled in favor of the plaintiff, but we appealed this decision, and in March 2020, the second instance court reversed the first-instance decision and ruled that the trademarks were not confusingly similar.

For more information, please contact PETOŠEVIĆ Serbia Attorney at Law Dragana Vulović.

Slovenia – Trademark Prosecution for Traveljigsaw

PETOŠEVIĆ Slovenia assisted Traveljigsaw Limited, a UK-based online car rental agency, in overcoming the refusal of their national trademark application for RENTALCARS.COM. The Slovenian IPO refused the trademark application stating that the mark is devoid of any distinctive character. We first filed a response to the provisional refusal and submitted evidence of the client’s previous extensive use of the trademark in Slovenia, but the IPO rejected the trademark application on absolute grounds. We then filed a lawsuit before the Administrative Court, which revoked the IPO’s refusal decision. The IPO re-examined the application, which subsequently led to a successful trademark registration, in December 2018.

For more information, please contact PETOŠEVIĆ Slovenia Associate Maja Žnidarič Plevnik.

Ukraine – Domain Name Case for CooperVision

In March 2020, PETOŠEVIĆ Ukraine successfully represented CooperVision International, one of the leading contact lens manufacturers, in a domain name dispute under the UA-DRP procedure before the WIPO Arbitration and Mediation Center. The unauthorized use of the client’s trademarks ceased and the disputed <.COM.UA> was transferred to the client. This decision was among the first ones issued by the WIPO Center following the introduction of the UA-DRP procedure, which recently became applicable to <.COM.UA> third-level domain names.

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

Uzbekistan – Trademark Enforcement for Mars

PETOŠEVIĆ Uzbekistan recently represented Mars, Incorporated in an enforcement case that involved imposing administrative fines for trademark infringement on a local manufacturer of SNICKERS® candy bar lookalikes. Through a series of meetings and official requests between January and March 2020, we persuaded the Ministry of Justice and the local IPO that they could, according to the newly adopted legislation, initiate administrative proceedings for trademark, copyright and patent infringement, which lead to a game-changing shift in Uzbek IP practice. To our knowledge, this ruling is the first of its kind in Uzbekistan since 1994.

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