BDK Advokati/Attorneys at Law

On 25 April 2013, the Court of Justice of the European Union (General Court) rendered three judgments in cases initiated against decisions of the Office of Harmonization for the Internal Market (OHIM). In each case, the Court elaborated the rules that should be followed in the assessment of trademark distinctiveness. The decisions of OHIM withstood the Court’s scrutiny in all three cases.

A principal feature a sign needs to have in order to be registered as a trademark is - distinctiveness. This proposition follows from the essential role of trademarks in the course of trade: distinguishing goods and service of one undertaking from the goods and service of others. The most recent pronouncements by the General Court reassert some fundamental rules governing the meaning of distinctiveness.

In an earlier post, I analyzed a decision of the Commission for Protection of Competition finding that the Serbian ice-cream manufacturer Frikom abused its dominance on the wholesale market of industrial ice-cream by engaging in vertical price-fixing, imposing exclusivity on retailers either through explicit exclusivity clauses or through rebate schemes, and discriminating among customers by offering them differing payment terms.

The Commission imposed on Frikom a fine in the amount of approximately EUR 3 million. Following Frikom’s judicial challenge to the Commission’s decision, the Administrative Court, in its judgment of 12 March 2013, upheld the Commission’s decision both in the part determining infringementsand in the part imposing the penalty.

On 25 April 2013, the General Court of the European Union weighed in on the issue of relationship between three-dimensional marks and designs. In Su-Shan Chen v. OHIM, the Court compared a registered Community design incorporated into cleaning devices, on the one hand, and a Community three-dimensional mark, registered earlier, with very similar geometric form, dimensions and shape, on the other. The proprietor of the trademark prevailed over the proprietor of the design.

We addressed a similar issue in the second part of our previous post, Highlighter infringes drawing of another highlighter, says Serbian court. In that post, we referred to the decision of 9 August 2011 in which the Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) found that a Community design in the shape of a text highlighter infringed a three-dimensional Schwan Stabilo mark registered in Germany.

The 2009 Serbian Law on Protection of Competition is undergoing an overhaul. The first draft of the amendments, prepared jointly by the Ministry of Trade and the Commission for Protection of Competition, has been submitted for public debate.

The initial round of consultations was held on 10 April 2013, on the occasion of the Commission’s anniversary. The most noteworthy proposal concerns the extension of the statute of limitations for imposition and collection of penalties by the Commission.

A Protocol on Mutual Relations recently signed between the Republic of Serbia and the Serbian car manufacturer Fiat automobili Srbija has polarized the professional and business community.

According to the Protocol, the Serbian Government undertook to extend to Fiat financial support in the total amount of 14 million euros (6 million euros by the end of 2013 and 8 million euros by the end of 2014) under condition that Fiat employs a certain number of people within the said period, offers a 3000 euros discount to the resale price of its new car model “Nacionale 500L” on the domestic market and ensures that commercial banks and leasing companies offer to Serbian buyers financing for the purchase of the said vehicle with interest not exceeding a 3% annual rate on loans or leasing granted in euros.

On March 21, 2013, the Belgrade daily Politika published the operative part of a judgment rendered by the Serbian Commercial Appellate Court in a rare case concerning trademark infringement of a drawing of the shape of a product. The Court found that Gatarić International Group, the Serbian distributor of the highlighter pens “Donau D-neon”, infringed figurative trademark representing silhouette of the highlighter “Stabilo Boss”. Legal issues of considerable complexity are included in the case, but the judgment only glances over some of them.

The court proceedings extended over a period of time exceeding three years and ended on September 13, 2012, the day the Appellate Commercial Court issued the judgment (no. 7 Pž 8968/11). Schwan Stabilo, the plaintiff/appellant in the case, is the proprietor of the International trademark registered under number 749869, which has been protected in Serbia since 2000 for goods in class 16 – pencils, pens, refills, text markers and highlighters:

Serbia provides a rare example of a jurisdiction that does not use opposition proceedings as a means of ensuring that only those signs that fulfill requisite conditions receive protection under the law. We describe below the rules governing opposition proceedings, which in other jurisdictions share many common features. There seem to be no sound reasons for not reshaping the Serbian trademark law in line with these rules.

In the European context, opposition proceedings primarily aim at enabling holders of trademarks and, depending on a jurisdiction, other protected signs to prevent in a reasonably inexpensive and expeditious procedure registration of another mark which infringes upon, or dilutes, their rights.

In Ordem dos Técnicos Oficiais de Contas v Autoridade da Concorrência (judgment of 28 February 2013), the Court of Justice of the European Union weighed in on the issue whether a regulatory activity of a statutory professional association was an economic activity subject to assessment under competition law or an exercise of public authority outside the reach of competition law.

The judgment brings further clarity to the applicability of competition rules to public bodies when carrying out their activity, the topic we addressed in our previous post. 

On 7^th February 2013, the Serbian Ministry of Finance and Economy and the Serbian Investment and Export Promotion Agency published a discussion paper on reforms aimed at furthering the development of the IT sector in Serbia (“Discussion Paper”).

The proposed reforms are rather comprehensive and include startup grants, support to business incubators for IT companies, tax incentives, reduction of export expenses such as expenses of product certification, as well as support for promotion abroad.

This post examines whether and to what extent competition rules in Serbia and Bosnia & Herzegovina apply to public authorities when they prescribe regulations that affect or may affect competition in a particular market.

In the EU, regulatory activity is beyond the realm of competition law. The relevant competition law provisions of the Treaty on the Functioning of the European Union (TFEU) apply to “undertakings” but do not define this term. According to the ECJ, “the concept of an undertaking encompasses every entity engaged in an economic activity, regardless of the legal status of the entity and the way in which it is financed” (Klaus Höfnerand Fritz Elser v Macrotron GmbH, Case C-41/90, [1991] ECR I-1979, para. 21).

On 20 February 2013, in Caventa AG v. OHIM, the Fifth Chamber of the General Court of the European Union upheld the decision of OHIM’s Board of Appeal to deny registration as a Community mark of the sign B BERG. The applicant, Caventa AG (Switzerland) initially sought registration of the mark for clothing, footwear, and headgear, in Class 25 of the Nice Classification, as well as for gymnastic and sporting articles and equipment included in Class 28. The mark had the following look:

Anson’s Herrenhaus KG, owner of a verbal mark „Christian Berg“ (Community mark no. 3383676) registered in Classes 3, 18, 25 and 35, opposed the registration on the basis of Article 8(1)(b) of the Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trademark:

The two highest judicial institutions in Europe – European Court of Human Rights (ECtHR) and Court of Justice of the European Union (CJEU) – recently issued judgments concerning the relationship between intellectual property and human rights. Jurisprudence of the two courts on this issue is relatively scarce, so the two recent additions are worth examining even if they do not open any significant new grounds.

ECtHR – Copyright outweighs commercial speech

The first to speak on the subject in 2013 was the ECtHR, in the judgment of 10 January in the case Ashby Donald and others v. France (Application no. 36769/08).

I already wrote in this blog about the January 2012 decision of the Serbian Commission for Protection of Competition blocking Sunoko’s takeover of Hellenic Sugar and the subsequent judgment of the Administrative Court quashing the Commission’s decision on procedural grounds.

The Commission prohibited the proposed concentration that would have increased Sunoko’s market share from 50% to approximately 80%. Even though the Commission never published the reasoning of its decision, it follows from the judgment of the Administrative Court that the Commission’s main concern was in the fact that Sunoko charged higher prices to its Serbian customers than to its foreign buyers.

On 30 January 2013, the Serbian parliament adopted amendments to the Trademark Act of 2009. Most changes concern procedural aspects of the enforcement in case of an infringement. The remainder of the amendments mainly consist of minor changes in the wording, made in order to add clarity to, and remove redaction errors in the existing provisions in the law.

Although the amendments do not amount to substantial reshuffling of the law, some of the changes are worth noting. One major novelty is the addition of aesthetic functionality among the grounds for refusal of a trademark application.

Why are some chocolate shapes, and shapes of other candy, protected as trademarks and other shapes are not? The question comes to mind after reading the decision of 12 December 2012 whereby the Board of Appeals of the E.U. Office for Harmonization in the Internal Market (OHIM) conferred trademark protection on Nestle’s KitKat trapezoid bar:

Also in 2012, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (TTAB) allowed registration of the product configuration for Hershey chocolates: