Bayer victorious in trademark dispute against Kosovo pharmacy

Kosovo

The Appellate Court of Pristina has ruled in favour of German pharmaceutical company Bayer AG in a trademark infringement lawsuit against a Kosovan pharmacy operating under the name DPF Bayer. The Appellate Court’s decision is final and not subject to appeal.

In March 2011 Bayer initiated a lawsuit at the Commercial Court in Pristina (now the Basic Court of Pristina, Department of Commercial Matters), arguing that the defendant’s use of the mark Bayer as a trade name and service mark constituted trademark infringement. Bayer also filed a separate claim on the basis of infringement of a well-known trademark.

At the time of filing the lawsuit, Bayer held several international registrations designating former Yugoslavia and/or Serbia, which were subsequently re-registered in Kosovo during the revalidation period.

The defendant argued that the plaintiff had no capacity to sue because it had no business registration in Kosovo (ie, the defendant did not make a distinction between a trademark registration and a business registration).

The defendant also referred to Article 14.3 of the (former) Law on Trademarks, according to which no infringement proceedings may be initiated before the date of publication of a trademark registration, arguing that the revalidation procedure for Bayer’s international registrations had not been completed before Kosovo’s Patent and Trademark Office at the time Bayer filed the lawsuit. However, the court permitted Bayer to file the lawsuit because of its international registration with WIPO.

Further, the defendant argued that the plaintiff had acquiesced in the defendant’s use of its trademark, claiming that Bayer had not opposed the use of its mark for more than five successive years.

In June 2011 the Commercial Court ruled that, although the plaintiff had the capacity to sue and was entitled to trademark protection under Kosovo’s trademark law, the plaintiff could not ask the defendant to cease using the mark because, as per Article 49 of the Law on Trademarks No 02/L-54 (now repealed), the plaintiff had tacitly approved the defendant’s use of the mark. The court did not provide any further details as to why the conditions laid down by Article 49 were considered relevant in the dispute.

The Appellate Court cancelled the decision of the Commercial Court, stating that Article 49 applies only to cases where the plaintiff acquiesced in the use of a trademark – not a trade name. For that reason, the Appellate Court ruled that the first-instance court should not have accepted the defendant’s acquiescence defence in this case. In other words, the pharmacy was registered according to the Law on Business Organisations, which made Article 49 inapplicable in this case.

Jelena Jankovic, PETOŠEVIC, Belgrade

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