An intellectual property lawyer devotes only a part of his time to advising clients on the selection of a legal strategy for brand protection and representation in trademark registration procedures. We wrote about this role in one of the previous articles. Today we will talk about what happens when someone uses your brand in Serbia without your permission and what are the quick and determined reactions that you have to take in order to prevent or eliminate damage to your brand.
Trademark Infringement Lawsuit – Who Can File It?
The proprietor of a trademark registered in the Register of Trademarks, as well as the applicant of a trademark registered with the Intellectual Property Office, have the right to file a lawsuit for trademark infringement. An action may also be brought by the licensee, the user of the collective mark and the user of the guarantee mark under certain conditions. The owner of the famous trademark can also file this complaint. It is a user of a mark that is famous, i.e. recognized by at least 70% of consumers of a certain product or service.
Who can be sued for trademark infringement?
A person who uses the trademark in any way without authorization may be accused of trademark infringement and become a defendant in the court procedure with the competent court (in Serbia, these are the Commercial Court in Belgrade and the High Court in Belgrade). A lawsuit can also be filed against an intermediary, i.e. a person whose services were used in the infringement (e.g. sales agents, transportation service providers and organizers, etc.).
Deadlines
A lawsuit for trademark infringement cannot be filed at any time. The plaintiff is limited to a period of three years from the date when he found out about the actions that give rise to the lawsuit, i.e. of the person who undertook those actions. However, if the plaintiff has become aware of the illegal acts, for example, after five years and one month, the defendant may raise an objection of limitation and the court will reject the claim. The reason is that the plaintiff is limited by another – objective deadline, and that period is five years from the date of the last violation. So, after five years of someone illegally using your brand in circulation, you run the risk of your claim being rejected due to the statute of limitations.
Urgent measures before the lawsuit
Drafting a lawsuit often takes a significant amount of time, either because of the complexity of the case or because the lawyer does not have all the necessary information. Before filing a lawsuit, the court may be asked to secure evidence used in the proceedings. In the procedure of securing evidence, information and objects may be collected that can later be used to determine the liability of the defendant and to determine the amount of damages. In addition to securing evidence, the plaintiff may also request that the court order an interim measure which, for example, would result in confiscation or exclusion from circulation the items that cause the injury, and under certain conditions, the seizure of movable and immovable property of the person against whom the interim measure is ordered and the prohibition of payment of money from his accounts may also be requested.
Lawsuit and procedure before the court
These procedures are urgent. The court may be asked to establish trademark infringement, to prohibit the defendant from performing and repeating such acts, to oblige the defendant to compensate the plaintiff for damages, to bear the costs of publication of the judgment, the items infringing the trademark may be confiscated, excluded from circulation, destroyed or altered, or the seizure or destruction of materials or objects used in their production may be ordered. This may include, for example, the products themselves, the machinery used for production, fabrics and other materials, final products, etc.
The court may oblige the person who infringed the trademark to pay the plaintiff an adequate amount of money in order to eliminate the consequences of illegal actions. The exact amount depends on all the circumstances of the case and the economic consequences of the trademark infringement. What is particularly important is that the plaintiff can also claim lost profits, i.e. the amount of profit that could reasonably have been expected, if there had been no illegal actions of the defendant.
Due to the nature of the subject matter of the proceedings, the court may order the defendant to submit data and evidence at its disposal that may be important for the plaintiff’s success in the dispute and for the amount of damages (e.g. banking, financial and other business documents).
How much does all this cost?
In short – a lot. According to the Attorneys’ Tariff, which is binding for all attorneys in Serbia, trademark infringement disputes are one of the most expensive procedures from the point of view of the costs of hiring a lawyer. Only for the composition of the lawsuit can cost at least RSD 75,000.00 (around EUR 640). This is a basic fee, and in practice a lawsuit often costs much more. Furthermore, each action (e.g. attendance at a hearing) may cost at least an additional RSD 75,000.00 for each hearing held. If a lawyer prepares a complaint for you, this costs additional RSD 150,000.00 (around EUR 1.280). In these procedures, it is often necessary to engage an expert, which represents an additional cost, the amount of which depends on the complexity of the expert examination and the selection of the expert.
All these costs end up falling on the person who loses the dispute. For example, if the plaintiff succeeds in the dispute in its entirety, the court will oblige the defendant to pay the plaintiff all the costs that he has borne up to that point, which were necessary for the conduct of the proceedings.
So, if you have a serious intention to build your own brand in Serbia, and potentially on some other markets, you should get informed about the prerequisites and costs of such an endeavor beforehand. Trademark registration is the first and necessary step, but continuous monitoring and adequate response in the event of trademark infringement are crucial for the survival and future of your brand.
Author: Attorney Milica D. Čučković, member of the Belgrade Bar Association