CEE Legal Matters

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  • Ukraine: The Ministry of Economy Introduces New Rules for Drafting, Filing, and Examining Applications for Inventions and Utility Models — Challenges and Opportunities for Clients

    On 25 October 2024, new rules for the registration of inventions and utility models in Ukraine (“Rules”) came into force. Pursuant to Order of the Ministry of Economy of Ukraine No. 23301 dated 9 September 2024, the Rules set out the requirements for the drafting, filing and examining of an invention and utility model applications.

    In general, the procedure for registering inventions and utility models in Ukraine has not changed, but the Rules now encapsulate both the changes that have occurred in this area since the adoption of the previous version of the Rules for Registration of Inventions and Utility Models 2002, and the current business requirements designed to make the state registration system a convenient and effective tool for the protection and enforcement of patent rights.

    The Rules specifically state the following:

    • The subjects eligible to submit applications;
    • The list of documents required for the submission of applications and the procedure for document submission;
    • Requirements for the content of the application, including in various industries;
    • Procedure for the examination of the application;
    • Peculiarities of registering secret inventions (utility models) and filing international applications;
    • Actions regarding the application that may be initiated by the applicant.

    Key changes

    • Digitalization of certain processes, particularly the submission of an electronic application and introduction of a procedure for communication regarding the application;
    • Priority examination of applications in significant areas for Ukraine such as green energy, transportation technologies, nano- and biotechnology, and the defense sector;
    • Introduction of a check on the application of personal special economic and other restrictive measures/sanctions on the applicant (the so-called “Sanctions Clause”);
    • The procedure for filing objections to the application;
    • Information search based on the claims of the filed application;
    • Issuance of a certificate of additional protection to the holder of a patent for an invention, the subject matter of which is an active pharmaceutical ingredient of a medicinal product, a process for obtaining a medicinal product or using a medicinal product, an animal protection product, or a plant protection product.

    Overall, the Rules can be considered positive from the point of view of doing business in Ukraine. The Rules play an important role in Ukraine’s European integration, as they provide for the implementation of certain requirements under the EU-Ukraine Association Agreement. Moreover, the Rules are also in line with the provisions of the Patent Cooperation Treaty (PCT) and the Patent Law Treaty (PLT).

    Recommendations

    Note that the new Rules entered into force on 25 October 2024. From this date, the registration of inventions and utility models is carried out in accordance with the new requirements.

    By Oleksiy Stolyarenko​, Partner, and Alla Smorodyna, Associate, Baker Mckenzie

  • How the UK’s New Corporate Criminal Offence Could Impact EU Businesses

    The UK government recently unveiled guidance on a major update to its corporate fraud laws: the “failure to prevent fraud” offence, introduced through the 2023 Economic Crime and Corporate Transparency Act (ECCT). Taking effect on September 1, 2025, this law could have serious implications for companies operating within the EU.

    WHAT DOES IT SAY?

    Under the ECCT, large organizations can be held liable if an employee, agent, subsidiary, or other “associated person” commits fraud with the intent to benefit the organization, and the organization fails to implement reasonable fraud prevention measures.

    What is meant by ‘large organizations?

    The offence of failure to prevent fraud applies only to large organizations.  A ‘large organization’ is defined in section 201 as meeting at least two of the following criteria:

    • more than 250 employees
    • more than £36 million turnover
    • more than £18 million in total assets

    These conditions apply to the financial year of the organization that precedes the year of the base fraud offence. These criteria apply to the whole organization, including subsidiaries, regardless of where the organization is headquartered or where its subsidiaries are located.

    In certain scenarios, the offence also applies when fraud is committed with the intention of benefitting a client of the organization. Notably, it is not necessary to prove that directors or senior managers authorized or were aware of the fraudulent activities.

    While individuals who commit fraud will be held accountable, the organization itself may also face prosecution for failing to prevent the offence.

    The new offence will take effect on September 1, 2025, giving organizations time to develop and implement robust fraud prevention procedures.

    Small organizations, while exempt from direct liability, should remain vigilant as they may be considered “associated persons” when providing services for or on behalf of larger entities.

    WHY ARE WE LOOKING AT IT?

    Although the offence primarily applies in the UK, it has extra-jurisdictional reach in certain circumstances. For instance, prosecution may occur if there is a UK connection (nexus), such as fraud resulting in financial gain or loss within the UK. For example:

    • A subsidiary or franchise meeting the “large organization” threshold may be deemed a “relevant organization” and held liable for its own actions. However, parent companies are not liable for unrelated fraudulent acts by subsidiaries, particularly when the fraud does not benefit the parent organization;
    • A UK-based employee committing fraud could result in the employing organization being prosecuted, regardless of where the organization is based;
    • Overseas organizations may face prosecution if fraud is committed in the UK or targets UK victims.

    On the other hand, fraud committed abroad by overseas employees or subsidiaries with no UK nexus does not fall under this offence.

    Therefore, EU-based companies operating in the UK, or engaging with UK clients or employees, could be prosecuted by UK authorities unless they demonstrate that reasonable fraud prevention procedures were in place.

    HOW TO PREVENT “FAILURE TO PREVENT FRAUD”. THE UK GOVERNMENT GUIDANCE

    The newly published guidance, issued under Section 204 of the ECCT, provides recommendations on fraud prevention procedures. It emphasizes that organizations can defend themselves in essence by demonstrating the existence of reasonable fraud prevention measures.

    In any case, organizations should align their fraud prevention frameworks with six principles:

    1. Top-level commitment – Leadership must prioritize anti-fraud measures.
    2. Risk assessment – Identify and evaluate fraud risks within the organization.
    3. Proportionate, risk-based procedures – Develop tailored prevention measures.
    4. Due diligence – Vet individuals and entities involved in business operations.
    5. Communication – Foster awareness including through training and whistleblowing channels.
    6. Monitoring and review – Continuously assess and improve fraud prevention measures. Also, conduct investigations if fraud is detected or suspected, investigations which should be independent, clear about their internal client and purpose, appropriately resourced, empowered and scoped (including through legal advice), and legally compliant. 

    These principles are flexible and outcome-focused, enabling organizations to adapt the procedures to their circumstances.

    The UK’s introduction of the “failure to prevent fraud” offence underlines the importance of robust fraud prevention measures for organizations operating in or engaging with the UK. The extraterritorial implications mean that EU companies could be prosecuted under this law if a UK connection is established. As the offence takes effect in September 2025, businesses should act now to assess and strengthen their fraud prevention frameworks.

    By Andrei Croitoru, Partner, Act Legal

  • Lessons Learned From Recent Case Law On Bad Faith Trademark Filings In Bosnia And Herzegovina

    Unlike many neighboring countries, the Trademark Law of Bosnia and Herzegovina explicitly addresses bad faith trademark applications as both relative grounds for refusal and as a basis for contesting a trademark through court proceedings. In other words, trademark applications filed contrary to the principles of good faith and fair dealing can be challenged either through an opposition before the Institute for Intellectual Property or by filing a lawsuit before the competent court. While this dual system theoretically provides two distinct avenues of recourse, practical experience shows that both mechanisms tend to merge into a single, judicially driven process. Below, we analyze the key lessons drawn from recent case law concerning bad faith trademark filings.

    Differences Between Administrative and Judicial Procedures

    The formal distinction between these two procedures lies in the forum and the outcome. In the administrative opposition or invalidation procedure before the Institute, the case concludes with a decision refusing the bad faith application or invalidating the registered mark. In contrast, judicial proceedings focus on proving the bad faith of the applicant through litigation. If successful, the court issues a judgment recognizing the plaintiff as the rightful owner of the application or registration.

    Practical Convergence of the Mechanisms

    In practice, however, these two mechanisms often converge. This is because the Institute does not make an independent assessment of bad faith. Instead, it directs the parties to resolve this issue in court. Consequently, regardless of whether the challenge begins administratively or judicially, proving bad faith through court proceedings becomes a requirement in each case.

    Criteria for Assessing Bad Faith

    The courts assess bad faith based on several key criteria, which are applied consistently. These include:

    • Timing of the Application: Whether the trademark application was filed with the intent to infringe upon existing rights, or to block a competitor’s market entry.
      • Similarity or Identity of the Marks: The degree of similarity or identity between the contested trademark and the one used by the plaintiff, which can suggest an attempt to exploit the reputation of an existing brand.
      • Knowledge of Prior Use: Whether the applicant was aware of the earlier use of the mark by the plaintiff or had prior knowledge of the brand’s reputation in the market.
      • General Knowledge of the Industry: The applicant’s familiarity with the industry in which the mark is used, and the length of time the plaintiff has been using the mark in that particular market.
      • Business Relationship Between the Parties: Any direct or indirect business relationships between the applicant and the plaintiff that might indicate an attempt to benefit from the plaintiff’s goodwill or reputation.
      • Other Circumstances of the Specific Case: Any additional circumstances surrounding the application that might suggest bad faith, such as a pattern of filing conflicting trademarks or acting in a manner detrimental to fair competition.

    The Logical Inconsistency of the Dual Procedure

    Here lies the central issue: despite the dual procedural avenues available, both the opposition and court proceedings require the same evidence and aim to prove the same fact — that the trademark application or registration was filed in bad faith. The key distinction is that if an opposition is filed before the Institute, the Institute will, in most cases, refer the parties to court to determine the bad faith. In other words, the applicant must still go to court to prove bad faith, which can take no less than a year in the first instance.

    Given this reality, the question arises: why would a party initiate an opposition procedure and incur additional costs for the administrative process if the only effective solution is to file a lawsuit? After the Institute refers the matter to court, the same result could be achieved — the plaintiff may even have the possibility of having the trademark transferred to them if successful in the litigation. Once the court decision is rendered, the plaintiff can either abandon the trademark or simply withdraw the registration/application, essentially achieving the same result as in the opposition procedure.

    Practical Implications and Future Considerations

    This creates a logical inconsistency in the practice of local authorities, where parties are effectively required to follow a redundant, time-consuming, and costly path, rather than directly pursuing the court procedure, which offers the same (and often more comprehensive) remedy. This contradiction suggests that the opposition mechanism, while legally provided for, has limited practical value and could be streamlined or reconsidered in future interpretations of the law. As the case law evolves, it is crucial for trademark holders to be aware of this reality and to prepare for court proceedings as the primary and often only effective avenue for addressing bad faith trademark filings.

    By Mina Jovanovic Ninkovic, Senior Counsel, ZMP

  • RTPR Advises Autonom Services on Bond Issuance

    RTPR has advised Autonom Services on a bond issuance with an aggregate nominal value of EUR 30 million and a maturity of five years, with a fixed annual interest rate of 6.14%.

    BRD – Groupe Societe Generale was the sole coordinator of the transaction, and BT Capital Partners was the manager.

    According to RTPR, “Autonom Services is the most important independent player in the operational leasing and rent-a-car markets in Romania. The bonds issued have been admitted to trading on the regulated market of the Bucharest Stock Exchange and are correlated with the company’s sustainability objectives.”

    The RTPR team included Partners Mihai Ristici and Cosmin Tilea, Counsel Vlad Stamatescu, Senior Associate Marina Fecheta-Giurgica, Associate Andreea Stoiciu, and Junior Associates George Capota, Bianca Cojocaru, and Alexandra Grieb.

  • Renatus Kollar and Lucia Raimanova Appointed Co-Managing Partners of A&O Shearman Bratislava Office

    Renatus Kollar and Lucia Raimanova have been appointed as Co-Managing Partners of A&O Shearman’s Bratislava Office.

    Kollar and Raimanova take the helm of the office following the passing of former Managing Partner Martin Magal. As A&O Shearman puts it, Magal’s “contributions to the firm will be remembered with deep gratitude.”

    Kollar has been with the firm since 2002, first as an Associate between 2002 and 2007, then as a Senior Associate between 2007 and 2011, and as a Partner since 2011.

    “I am honored to step into this role alongside Lucia and to build upon the legacy that Martin left behind,” Kollar commented. “His dedication and vision have set a strong foundation, and we are committed to continuing that work with our market-leading team here in Bratislava. Partnering with Lucia in leading the office is a great privilege.” 

    Raimanova joined the firm in 2004 as a Senior Associate and was promoted to Counsel in 2016 before becoming Partner in 2021.

    “Renatus and I have a shared vision for growth, innovation, and client excellence, and I am excited to collaborate closely with him and our talented team, which comprises 25 lawyers, including five counsel, as we work to achieve new milestones,” added Raimanova.

  • JPM Partners Advises Presto Pay on Payment Institution License in Montenegro

    JPM Partners has advised Presto Pay on obtaining a payment institution license from the Central Bank of Montenegro.

    PrestoPay is a payments and transfers company.

    The JPM Partners team included Senior Partner Lana Vukmirovic Misic, Partners Milica Komar and Alma Karadjuzovic Djindjinovic, and Associate Dajana Drljevic.

  • Closing: PPC Group’s Acquisition of Evryo Group’s Romanian RES Portfolio Now Closed

    On November 21, 2024, Clifford Chance announced that PPC Group’s acquisition of Evryo Group’s Romanian RES portfolio (as reported by CEE Legal Matters on August 9, 2024) has now closed.

    As previously reported, Clifford Chance advised PPC Group on its acquisition of Evryo Group’s renewable energy portfolio in Romania, including 629 megawatts of renewable energy sources in operation and 145 megawatts in pipeline assets. RTPR and, reportedly, Jones Day advised Evryo on the deal.

    According to RTPR, the transaction includes the Evryo Wind Farm, Romania’s largest operational onshore wind farm, with a total installed capacity of 600 megawatts, and the group’s hydropower system comprising four hydroelectric plants and associated hydro facilities, with a total installed capacity of approximately 22 megawatts.

    PPC is a Southeast European electric utility, with activities in electricity generation, distribution, and sale of advanced energy products and services in Greece, Romania, and North Macedonia. It is the largest power supplier in Greece and Romania, servicing 8.8 million customers in total, providing them with approximately 33 terawatt-hours of energy.

    Evryo Group is owned by Macquarie Asset Management. According to Clifford Chance, the total enterprise value of the deal is approximately EUR 700 million.

    The Clifford Chance team was coordinated by Bucharest-based Partner Nadia Badea and Counsel Loredana Ralea and included Of Counsel Eleonora Udroiu, Senior Associates Radu Costin, Lavinia Dinoci, Carmen Buzenche, Diana Borcean, and Ecaterina Burlacu, and Associates Nicolae Grasu, Roxana Barboi, and Filip Marinau, as well as Munich-based Partner Alex Cook.

    The RTPR team was coordinated by Partner Roxana Ionescu and Senior Associate Cezara Urzica and included Partner Cosmin Tilea, Senior Associates Marina Fecheta-Giurgica and Andreea Nedeloiu, Associates Serban Halmagean, Flavia Mincu, and Livia Tuca, and Junior Associates Andrei Nicolae, George Capota, Irina Marinescu, Maria Luca, Radu Ciolacu, Daria Spatariu, David Mirea, and Luka Perovic.

  • PwC Legal and Sommerrey & Partners Advises on Benefit Systems’ Acquisition of Organic Fitness Network

    PwC Legal has advised Benefit Systems on its acquisition of MyOrganiq which runs eight Organic Fitness clubs in western Poland. Sommerrey & Partners advised the sellers.

    The value of the transaction is approximately PLN 25 million. According to Benefit Systems, “the Organic network is a long-term partner of the MultiSport Programme, the offer of which is very popular among Benefit Systems Group’s sports card users.”

    The PwC Legal team included Partner Wojciech Trzcinski, Counsels Marcin Dabrowski and Paulina Komorowska-Mrozik, and Senior Associates Katarzyna Hincz, Aleksander Zielinski, Konrad Biskup, and Dominika Chodkowska.

    The Sommerrey & Partners team included Partner Paulina Sommerrey.

  • White & Case and A&O Shearman Advise on Energo-Pro Green Finance’s CZK 3.5 Billion Green Bond Issuance

    White & Case has advised Energo-Pro Green Finance on its CZK 3.5 billion retail domestic offering of green notes due 2029 with J&T IB and Capital Markets as the arranger and J&T Banka and UniCredit Bank Czech Republic and Slovakia as the managers. A&O Shearman advised the joint lead managers.

    The DK Holding Investments group includes the Energo-Pro group and operates a portfolio of 49 hydropower plants in Bulgaria, Georgia, Turkiye, Spain, and the Czech Republic. Additionally, it is developing hydropower plants in Colombia and owns and operates electricity distribution networks in Bulgaria and Georgia.

    According to White & Case, the notes are guaranteed by its holding company DK Holding Investments, and secured over shares in Energo-Pro and certain other assets of DK Holding Investments. The notes have been admitted to trading on the regulated market of the Prague Stock Exchange. 

    “We are pleased with the strong demand for our green bonds, indicating that renewable power generation, infrastructure, and storage assets appeal to domestic investors,” said General Counsel and Chairman of the Supervisory Board at Energo-Pro Christian Blatchford.

    In 2023, White & Case advised on Energo-Pro’s EUR 300 million bond issuance (as reported by CEE Legal Matters on August 2, 2023).

    The White & Case team in Prague included Partner Petr Hudec, Counsel Petr Smerkl, Associates Jan Vacula and Jakub Kopacek, and Legal Intern Josef Levy.

    The A&O Shearman team included Partner Petr Vybiral and Associates Josef Pavlicek and Jan Mourek.

  • Cytowski & Partners Advises Wordware on USD 30 Million Series Seed

    Cytowski & Partners advises Wordware on its USD 30 million series seed with Spark Capital, Felicis, and Y Combinator. Goodwin Procter reportedly advised Spark Capital and Felicis.

    Wordware is a Silicon Valley- and Poland-based LLM startup building automated AI agents. According to Cytowski & Partners, “the transaction is historically groundbreaking for Poland’s startup ecosystem as the deal is recognized as the largest seed round ever in Poland.”

    The Cytowski & Partners team included Partner Tytus Cytowski, Associates Kunal Kolhe and Heidi Fan, Lawyer Michal Fert, and Law Clerk Fabiana Morales Centurion.