THE IMPORTANCE OF THE EUROPEAN INTEGRATIONS IN THE FIELD
OF ENFORCEMENT OF TRADEMARK RIGHTS

For the first time in its 128 years long history, INTA has organized an official event in Serbia. The roundtable, under the topic „Importance of the European integrations in the field of trademark law enforcement “ was held on May 28, 2007 in Hyatt Regency Hotel Belgrade. The hosts of the roundtable, the Law firm „ZIVKO MIJATOVIC AND PARTNERS“managed to gather for this occasion more than 30 professionals in the field of enforcement of Trademark rights, including therein 7 judges, director of the Serbian Intellectual Property Office, Customs administration officials, Market inspectorate officials, in-house attorneys from mayor Serbian companies (trademark holders) and representatives of most reputed law firms in the field of IP in Serbia. The main goal of the roundtable was the exchange of information and experiences with the emphasize on recent changes and achieved advances in the field of enforcement of trademark rights in Serbia. Most of these advances are due to efforts made by Serbia in harmonizing their laws with the legislation and the case law of the EU.

The speakers were:

Ms. Snezana Karanovic, Head of the Department for the protection of intellectual property rights of the Customs Administration of the Republic of Serbia;

Ms. Snezana Pantic, Judge of the Commercial Court of Nis;

Mr. Nicholas Studler, Trademark Counsel, The Coca-Cola Co., Vienna, Austria

Dr. Milenko Manigodic, Attorney at Law, Manigodic Law Office.

The Lectures were focused on the system of trademark rights protection before the Courts in Serbia, and also to the problems present in this field (efficacy of Courts in cases related to industrial property, experience of Courts in this field, harmonization of court practice in Serbia with court practice of EU member states, problem of interim injunctions in cases of protection of intellectual property rights (IP)) etc.

Ms. Snezana Karanovic, concluded that after year 2003, when the Customs Act has entered in to force, number of Customs surveillance measures was constantly growing achieving the number of 170 requests in this year (160 filed by the foreign Trademark holders and 10 filed by the Serbian trademark holders). In 2006, there were 1420 cases of temporary detention of goods on the basis of infringements of intellectual property rights, out of which 60% was made on the basis of the requests for customs surveillance measures made by the Trademark holders, while 40% of the detentions were made on the ex officio basis.
Judge Snezana Pantic pointed out that the number of cases related to infringements of trademark rights is constantly growing, especially the cases in which parties in the proceeding, both the Plaintiff and the Defendant are foreign legal entities (problem of seizure of counterfeit goods in transit through Serbia where both importer and exporter are foreign companies). In relation to this phenomenon, Ms. Pantic concluded that the Serbian courts must declare themselves as competent, and decide whether there was a Trademark infringement.

Mr. Nicholas Studler gave a short review of infringement cases of The Coca-Cola Company in the Balkans region and of successfully completed cases of Customs` detention of counterfeit goods.
Dr. Milenko Manigodic presented critical review of positive-legal solutions in the field of civil court enforcement of Trademarks and asked the courts to make better implementation of the article 61 of the Trademark Act giving the authority to the courts to issue the preliminary injunction measures always when there is identity or obvious similarity between the marks.
The second part of the roundtable was envisaged as an open discussion. Most of the participants took part in the discussion that lasted more than 2 hours, with the following topics:

1. Enforcement of imperative interim injunction pursuant to the Article 61 of the Trademark Law by the Courts in the Republic of Serbia.
2. Acceleration of trademark examination upon the request of Customs Administration
3. Jurisdiction of the Court in the Republic of Serbia for counterfeit goods in transit (res in transitu) and when both the Plaintiff (IP holder) and the Defendant (owner of goods) are foreign legal entities
4. Exhaustion of trademark right -  Parallel import, Article 36 of the Trademark Law

5. Remuneration of non-material damage in cases of trademark rights infringement

In the process of harmonization of regulations and case law of the Republic of Serbia with regulations and case law of EU in the field of intellectual property rights some significant steps have been made. However, the implementation of the new regulations also requires the modification of certain system laws. Modifications need to be made in the Trademark Act, in the Civil Proceedings Act, and in the Commercial Act. These are the basic preconditions for the Republic of Serbia to take more important role in global struggle against piracy and counterfeit and to achieve better results in enforcement of Trademark rights.

List of participants

1. Ms. Branka Totic, Director of the Intellectual Property Office
2. Ms. Snezana Pantic, Judge, Commercial Court of Nis
3. Ms. Snezana Karanovic, Head of IP department, Customs Administration of the Republic of Serbia
4. Mr. Ivan Matic, Customs inspector, Customs Administration of the Republic of Serbia
5. Ms. Sandra Orac, Custom inspector, Customs Administration of the Republic of Serbia
6. Mr. Milan Milojevic, Attorney at Law, Zivko Mijatovic and Partners Law Office
7. Ms. Vesna Lazic, Customs inspector, Customs Administration of the Republic of Serbia
8. Mr. Jovan Jekic, USAID
9. Mr. Dragoljub Cosovic, Attorney at Law
10. Mr. Predrag Mitrovic, patent attorney, Dragoljub Cosovic Law Office
11. Ms. Dragica Popesku, Judge, District Court of Belgrade
12. Ms. Vera Despotovic, Trade Inspectorate, Ministry of trade and services of Republic of Serbia
13. Mr. Borisav Dakic, Trademark counsel, Hemofarm Company
14. Mr. Kristijan Keresi, Attorney at Law
15. Mr. Nicholas Studler, Trademark Counsel, The Coca-Cola Co.
16. Ms. Carla Biancotti, „Vukmir & Suradnici“ Law Office
17. Mr. Andrija Popovic, Attorney at Law, Slobodan Popovic & Branimir Popovic Law Office
18. Ms. Iva Zebeljan, Attorney at Law, „Karanovic-Nikolic“ Law Office
19. Mr. Predrag Milosevic, Hemofarm Company
20. Ms. Milica Stanojevic, Judge, High Commercial Court of Serbia
21. Ms. Natasa Knezevic, Judge, High Commercial Court of Serbia
22. Ms. Emilija Dimitrijevic, Trademark counsel, “GALENIKA” AD. Belgrade
23. Mr. Milan Raskovic, Trademark counsel,  “GALENIKA” AD. Belgrade
24. Mr. Andrej Prekajski, Attorney at Law, SD Petosevic Law Office
25. Mr. Aleksandar Radulovic, counselor, Ministry of economy and regional development
26. Mr. Dejan Bogdanovic, Attorney at Law, Mikijelj Jankovic & Bogdanovic Law Office
27. Ms. Vesna Todorovic, Judge, Commercial Court of Belgrade
28. Mr. Milenko Manigodic , Attorney at Law
29. Ms. Lidija Djeric, Attorney at Law, Popovic,Popovic, Samardzija & Popovic Law Office
30. Mr. Milivoje Pavlovic, Attorney at Law
31. Mr. Slobodan Vlahovic, Attorney at Law, Zivko Mijatovic and Partners Law Office