German pet food manufacturer wins bad-faith case against Serbian company
The Commercial Appellate Court of Belgrade has ruled against a Serbian pet food importer and producer which had registered and used two trademarks belonging to its business partner, German company Gimborn. The court upheld the 2010 first instance ruling of the Commercial Court of Belgrade.
Gimborn manufactures and distributes various brands of cat, dog and small animal food and care products. It registered the international trademark GIMPET (Registration 506326) in 1986 and the international trademark GIMBORN (Registration 591166) in 1992 for goods in Class 31 of the Nice Classification. In 2003 the defendant registered the trademarks GIMPET (Registration 49583) and GIMBORN (Registration 49584) with the Serbian Intellectual Property Office (IPO) for goods in Class 31. Gimborn's marks, however, obtained protection in Serbia only in 2007, following a request for designation.
During the court proceedings, Gimborn argued that it had been using the trademarks in commerce all over the world - including the former Yugoslavia, and later in Serbia and Montenegro - to designate Class 31 products, long before the defendant registered its marks with the Serbian IPO. It also argued that the defendant knew that Gimborn was using identical or highly similar marks in Serbia, as the defendant had started buying, importing and selling Gimborn's products in Serbia and Montenegro in 2001. Gimborn thus accused the defendant of intentionally taking unfair advantage of the reputation of its trademarks.
Even though Gimborn's trademarks were entitled to protection under Article 6bis of the Paris Convention for Protection of Industrial Property (well-known marks), Gimborn refrained from providing evidence that its marks were well known, as it believed that the legal basis for the case was contained in Article 66 of the local trademark law.
The defendant argued that it had been producing its own pet food under the brand names Gimborn and Gimpet since 1993. It emphasised that Gimborn's trademarks were not registered and protected within the territory of Serbia in 2003, when it registered its marks with the Serbian IPO. The defendant also alleged that it did not seek to take advantage of Gimborn's reputation, arguing that, in Serbia, very few pet owners feed their pets industrially prepared pet food. Finally, the defendant stressed that Gimborn had not shown that its marks were well known.
The court took into consideration:
- the similarities between the goods covered by the parties' marks;
- the similarities between the marks; and
- the correspondence exchanged by the parties between 2001 and 2004, which proved that they were involved in a business relationship at the time when the defendant applied for the registration of its marks.
The court ruled that :
- the defendant was aware of the existence of Gimborn's marks; and
- the defendant had registered the marks and used them in bad faith.
The court ordered that the defendant pay Gimborn's fees in the amount of approximately €1,500 ($2,000).
The court based its decision on Article 66 of the Law on Trademarks (61/2004 and 7/2005) of Serbia and Montenegro, which states that, if a trademark is filed in bad faith, the rightful owner can ask for the mark to be transferred into its name.
On April 27 2010 the defendant filed an appeal with the Commercial Appellate Court, which upheld the lower court's ruling. The court issued it decision on December 15 2011, and the final decision entered into force on February 20 2012.
Jelena Jankovic, PETOŠEVIC, Belgrade
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