Serbia’s 2020 Trademark Law introduced a novel provision to local law: the trademark holders have been explicitly empowered to claim profit surrender in cases where the infringement was not intentional or grossly negligent.
Specifically, the Law stipulates: If the violation of rights was not committed intentionally or through gross negligence, the court may award the plaintiff compensation in the amount of the profit that the defendant gained through the violation of rights. This provision not only limits the liability of defendants in such cases, but also significantly eases the burden of proof for a trademark holder seeking to be awarded for trademark infringement.
In one of the first court rulings relying on this legal ground and this specific provision, the court awarded the trademark holder with over EUR 1.2 million profit calculated from the sale of products bearing the disputed mark. The legal battle in the first instance focused on several contentious and complex legal issues:
- Does the trademark holder have to prove that they suffered damage to claim profit surrender?
- Does the trademark holder have to prove the contribution of the use of the trademark to the profit obtained?
- Can trademark holders seek profit surrender for infringements that had occurred before enactment of the novel of the Trademark Law in 2020?
The first instance ruling answers these questions, allowing straightforward monetary award based on the established trademark infringement without the trademark holder having to prove additional facts. It remains to be seen whether higher court instances will uphold this interpretation, which would significantly enhance the position of rights holders and improve the efficiency of the existing protection system.
This landmark case not only underscores the importance of robust legal representation but also highlights the evolving landscape of intellectual property rights in Serbia. Whether you’re an IP enthusiast or a stakeholder in the industry, this decision is a game-changer worth noting. Stay tuned to see how this story unfolds in the higher courts!
* ZMP represents the plaintiff in this court dispute. All standpoints and insights referenced in this article represent personal opinions and professional views of the author.
This text is for informational purposes only and should not be considered as legal advice. Should you require any additional information, feel free to contact us.
By Mina Jovanovic Ninkovic, Senior Counsel, ZMP
