July 31, 2020 at 11:49 am
Q&A III – Enforcement of your IP rights
Each month we answer 3-5 questions our clients most often have and share it in our Q&A series.
Here we are going to focus on steps to take when the owner’s rights are infringed upon (meaning used without consent) – either on the borders, within the market or before the Courts.
Q1: What are the steps when fake goods are being imported into a market?
A: We have already written about the importance of Customs surveillance petition on this website, so our answer will focus on practical steps – the Customs has an ex-officio duty to inform the IP owner of any seized goods – this is most easily done via local representative before the IPO (meaning that IR owners are sometimes ignored or it takes a very long time to contact them). Still, this ex officio right is made much easier and smooth via petition that the IP owner files with the Custom’s IP department enabling them to spot fake goods right away.
In any case, once the owner is informed of the seizure – they will have a very short term to decide how to proceed – 4 days, and to file the necessary paperwork. Only then are they allowed to examine the goods, take photos and either request the destruction of goods (if the importer does not object) or go to the Court with the same aim – to get the goods destroyed.
Once more, we want to stress the importance of the petition before the Customs that any IP owner (even based on an application) can file – which allows longer time frame to react, informs the Customs about the local agent to contact in cases of International Registrations and provides invaluable information to the people at the boarders on how to spot fakes.
Q2: What can we do if the goods are already on the market (either entering unnoticed by the Customs or made within the particular country)?
A: In this case, again, Market inspectorate has an ex-officio duty to seize such products.
Depending on the case, criminal charges are often held, but the IP owner can simply request the destruction of such goods, again, if the opposite party has not objected – otherwise Court proceedings are necessary.
Additionally, it is possible to alert the Ministry if the goods are found on the market and request their assistance, as only they can seize such goods and take action.
Q3: Which lawsuits are available in the IP world?
A: Trade Mark laws in our jurisdictions recognize:
– Lawsuit against infringement (this enables the owner, applicant or sometimes the licensee to file a lawsuit before the Court – we do not have specialized IP Courts or divisions- in order to stop such behaviour, seize goods, receive damages and request publication of such verdict. )
– Lawsuit challenging the trade mark (When the application is filed against the principle of a good faith and honesty and/or further registered, person whose legal interest has been violated, may request the Court to declare them the applicant, or the right’s proprietor.
This lawsuit can also be filed in cases when the application is in breach of contract or legal obligation.
Further, in cases where a sign is being used to mark goods and/or services, for which another entity has filed an application or has registration their rights, the person/company using the sign may request the Court to declare them the applicant or the right’s proprietor, providing proof that the sign in question became well-known, within the meaning of Article 6bis of the Paris Convention before the other entity has filed their application or registered this sign as a trade mark. This lawsuit can only be filed if no longed then 5 years have passed from the date of the registration at the IPO.
(Tags: Q&A series, trade marks, enforcement, Serbia, Bosnia, Croatia, Kosovo, Macedonia, Montenegro, Slovenia, Albania, Balkans, Market inspection, lawsuits)