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Enforcement of and Against Intellectual Property Rights

Enforcement of and Against Intellectual Property Rights

Serbia
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Serbia has a long-standing tradition in the protection of intellectual property rights. The Kingdom of Serbia was even one of the first 11 signatories of the Paris Convention in 1883.

Nowadays, the laws on trademarks, patents, and other industrial property rights are harmonised with the ones in the EU.

However, in the process of enforcement of intellectual property rights, issues in practice may arise in the following aspects:

  1. Enforcement against IP rights

The protection and enforcement of inventions and trademarks are guaranteed. The legislation in force even allows pledges on these rights. Except in the bankruptcy proceedings, the system never provided legal tools to enforce such pledges or to conduct other types of debt collection against these rights.

Our team members have been raising these issues before the Intellectual Property Office and the Chamber of Public Enforcement Officers for several years. The latest amendments to the Law on Enforcement and Security were published on 26 July 2019 in the Official Gazette RS no 54/19, and they introduced a significant change. This law entered into force on 3 August 2019. However, its application, in general, was postponed until 1 January 2020.

The relevant change in IP rights comes with Article 338a that allows the enforcement against patents, trademarks, and “other rights”. In terms of the procedure itself, the norms covering moveable assets are going to be applied.

This change will undoubtedly improve debt collection. Some issues remain open:

  • Since 2013, the courts in Belgrade have been the only ones competent for litigation matters in the IP field. However, there are no special rules about the territorial jurisdiction of the courts for deciding on enforcement against IP rights. For general enforcement, any court country-wide can be competent, depending mostly on the domicile of the debtor. It remains unclear whether enforcement against IP rights would be treated as general enforcement or as a matter in the IP field. Unfortunately, there is no available court practice that would shed some light on this issue;
  • The Law on Enforcement and Security lacks elaborate provisions which would regulate the very process of enforcement against IP rights. The process of enforcement against IP rights is regulated with the application of the rules related to the process of enforcement of movable assets. As enforcement of IP rights would, in practice, be very complex, the Law on Enforcement and Security should have regulated this matter in more detail. For instance, valuation of IP rights, the process of the sale, registration of sale before the competent authority can differ when compared to enforcement of movable assets; and
  • Although flexible norms are welcome into the Serbian legislation, without in-depth knowledge of the IP rights, the courts and public enforcement officers may struggle with the interpretation of what “other rights” are.

Additional issues may arise concerning the copyright and neighbouring rights and which segments of these rights can succumb to the enforcement.

To find out how some of these issues were resolved in practice and according to an unofficial survey, it seems that although there are many registered pledges on intellectual property rights (especially on trademarks), enforcement proceedings against these rights have yet to be initiated.

  1. Enforcement of IP Rights

If IP rights were infringed and holders wish to end the infringing act upon the court’s order, there is a specific issue that could arise. Article 4 of the Law on Enforcement and Security stipulates that the court will be exclusively competent for enforcement of performance, non-performance or sufferance that can be only undertaken by the enforcement debtor or for the enforcement of the debtor’s duty to withold from performing specific actions. When it comes to enforcement of IP rights, it could be difficult to interpret which specific measures would be the ones that only the enforcement debtor can perform or for which only the debtor can withhold performance (e.g. removal or repainting of the billboard, destruction of a machine). This can lead to a battle of competence where it would be left to the court or  an enforcement officer to provide specific interpretation, which would require a profound knowledge of IP rights. In addition, it takes time to make a court practice consistent.

The information in this document does not constitute legal advice on any particular matter and is provided for general informational purposes only.

By Nikola Kliska, Senior Associate, and Filip Susulic, Associate, Karanovic & Partners