Caterpillar victorious against importer of fake shoes

Caterpillar, the owner of the CAT mark, has won a battle in Kosovo against the importer of counterfeit shoes bearing the mark. The goods were destroyed and the importer was ordered to pay a fine for violating the Kosovo Criminal Code.

The Criminal Court in Ferizaj/Urosevac found that the director of the company NTP Mania had violated Article 241 of the Criminal Code (unauthorised use of a trade name, trademark or design) by importing and placing on the market counterfeit shoes bearing the CAT mark (October 14 2011, unpublished).

The court ordered that the director pay a fine of €1,000 and that 1,281 pairs of shoes bearing the CAT mark be seized and destroyed. The court held that the director's intention was to mislead consumers, and that he was aware that the quality of the shoes was lower than original Caterpillar shoes. In delivering the sentence, the court took certain mitigating circumstances into consideration - namely, the fact that the director did not have a prior criminal record. However, an aggravating circumstance was the widespread infringement of IP rights in Kosovo, which damages the country's reputation. Once the judgment became final, the goods were destroyed under the supervision of the Kosovo Police Office for the Suppression of Economic Crimes.

This puts an end to Caterpillar’s efforts to prevent the sale of the counterfeit shoes at issue in various countries. The shoes originated from China and were imported into Kosovo via Malta and Albania. Even though customs watch procedures were in place in both Malta and Albania, the goods were released in these countries. Following Caterpillar’s criminal complaint in Kosovo, the goods were temporarily seized by the Kosovo Police in NTP Mania’s warehouse. Upon completing the criminal investigation, the police filed a criminal complaint against the director of the company with the public prosecutor. Caterpillar participated in the proceedings as an injured party, but the court instructed the company to seek damages through civil proceedings.

The IP case law is very limited in Kosovo, and this case is encouraging for trademark owners wishing to enforce their rights in the country. In addition to civil and criminal actions, trademark owners can apply for a customs watch in Kosovo to prevent the import of counterfeit goods in the country.

Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade