International Update Continued The defendant submitted that BECTODINE was honestly coined by taking prefix BECT from BACTERIA and suffix ODINE from the generic molecule IODINE. It countered that ODINE was a publici juris word and no one could claim exclusivity thereon, as was also evident from over 700 trade marks with the suffix DINE subsisting on the Trade Marks Register. The defendant also pressed for having acquired rights over their mark by continuous use since 2006 on which basis it sought co-existence with BETADINE. The court applying the anti-dissection rule held that the marks BETADINE and BECTODINE when compared in entirety are confusingly similar. Further, it held that the defendant adopted the mark BECTODINE being fully aware of Plaintiff’s trade mark BETADINE which is evident from the similar packaging and trade dress. Given the malafide adoption, the court was of the view that no amount of subsequent use would protect the defendant’s rights in the dishonestly adopted mark. The court also upheld plaintiff’s rights in the color scheme and layout not only as a trade dress but also as a novel and unique artistic work and held that the defendant also infringed the plaintiff’s copyright. The order of ex-parte interim injunction was confirmed by the High Court vide order dated 4 January 2016. Serbia PETOSEVIC Serbia is drafting a new trade mark law, which aims to introduce the opposition system. If adopted, the main changes that the new law would bring are as follows: Observations Under the current law, the Serbian IPO can consider the written observation of any interested party that objects to the registration of a trade mark on both absolute and relative grounds for refusal. Although trade mark examiners are not required to take written observations into consideration, they have generally seriously considered them. Under the draft law, any natural or legal person can file a written observation, only on absolute grounds, within three months from the trade mark application’s publication date. This person does not 4 become party to the proceedings. The IPO must take the written observation into consideration and send it to the applicant, who may then submit a written response within 15 days. Oppositions According to the draft law, the IPO will conduct formal and substantive examinations on absolute grounds. The substantive examination on relative grounds (earlier rights) will be conducted only if an opposition is filed. Namely, the holder of an earlier trade mark or a wellknown trade mark (regardless of the list of goods/services), the licensee, or the holder of the earlier right to an individual’s name or image, copyright or industrial property right, can file an opposition based on relative grounds for refusal within three months from the application’s publication date. The trade mark will not be refused if the holder of the earlier trade mark or earlier right explicitly consents to the registration of the later mark. Therefore, the draft law clearly separates the absolute and the relative grounds for refusal. Registration Certificates Obtaining a trade mark registration certificate is optional under the new draft law. The certificate is issued at the request of the trade mark holder and upon filing the proof of payment of the prescribed fee. Ukraine PETOSEVIC The Ukrainian law to ratify the Protocol amending the TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights) entered into force on 12 March 2016. The Protocol will take effect upon its acceptance by two-thirds of the WTO members, in accordance with the provisions of paragraph 3 of Article X of the Marrakesh Agreement Establishing the World Trade Organization (WTO). According to a decision of the WTO General Council of 30 November, 2015, the period for acceptance was extended to 31 December 2017. The Protocol aims to make it easier for developing member countries to receive more affordable, generic versions of patented medicines, as it allows exports of medicines made under compulsory licenses to countries that are unable to manufacture them. Originally, compulsory licensing was to be authorized primarily for supplying the domestic market. Therefore, Ukraine will be able to issue compulsory licenses both to export drugs to other countries as well as to import the drugs it needs. Most likely Ukraine will act both as an exporter and an importer. The adoption of domestic regulations implementing the details related to compulsory licensing will follow later, closer to the date when the Protocol is expected to take effect. Ukraine The draft law on amendments to the Customs Code of Ukraine has recently entered the parliamentary procedure. It aims to harmonize the local customs legislation, particularly the provisions of Part XIV (IPR protection during the movement of goods across the customs border of Ukraine) with the corresponding EU regulations. If adopted by the parliament and signed by the president, the draft law will enter into force on 1 January 2019, three years after the entry into force of the Ukraine–EU Association Agreement (1 January 2016). The draft law aims to: • • • Expand the list of protected IP rights; Expand the list of persons who may seek IPR protection; Provide new definitions of terms and concepts such as “goods that infringe IP rights”, “counterfeit goods”, “pirated goods”, etc.; Establish a procedure for preventing IPR abuse during foreign economic activities, namely during the movement of protected goods across the customs border (export / import / transit of such goods); Introduce a destruction procedure for small batches of goods suspected of IPR infringement, in line with the small consignment procedure (EU customs enforcement regulation No. 608/2013). • •