Author: admin

Considering the country’s geopolitical position and historical background, it is safe to say that Serbia is still the leader in Intellectual Property development and awareness in the central Balkan region. This is not surprising, as the Serbian IP Office covered the entirety of the former Yugoslavia prior to its disintegration in the 1990s, while the IP Offices of the other former-Yugoslavia countries were only set up after they gained independence.

In 2013 significant lobbying steps were taken in the direction of forming specialized IP courts in Serbia. As most readers are aware, this is a growing trend in most European countries. At the moment, however, IP litigation in Serbia remains the domain of civil and commercial courts, which have proven to be ineffective in establishing a useful and consistent jurisprudence, as the cases take a very long time to reach first-instance decisions and those decisions are not always in harmony with one another.

With respect to raising awareness about IP rights, an IP Development strategy for the years 2011 to 2015 was adopted and mostly put into use. Also, the Serbian IP Office has set up an Education and Information Center which organizes a number of seminars and sessions for different audiences – from judges and public prosecutors to small and medium businesses – all with the general goal of promoting IP rights and raising the level of awareness regarding IP-related issues. Training sessions organized by the IP Office’s Education and Information Center cover topics from basic introductions to specific legal and technical issues. This has proven to be a very good practice especially in connection to other programs and funding provided for EU candidate states. For example, programs such as the Serbian Investment and Export Promotion Agency funding for registering IP rights have been implemented and seem to be in use by local small and medium enterprises. 

It should also be mentioned that significant help has been provided by WIPOs Educational Center through seminars and workshops oriented at IP professionals organized in association with the Serbian IP Office.

Apart from governmental efforts, IP professionals through organizations such as the INTA have started initiatives to adapt the IP environment to their needs. This effort can be clearly seen in the example of INTA and its anti-counterfeiting committee – the subcommittee for Eastern Europe and Central Asia – which devoted 2013 to organizing a number of round tables dealing with combating online counterfeiting. These round tables gathered all relevant stakeholders in the country and managed to identify a number of serious problems encountered in day-to-day protection of IP rights. Close cooperation has been formed with the Chamber of Commerce of Serbia, as well as with numerous government bodies such as the Ministry of Interior Affairs, the National Postal Service and Postal Service Providers, and the Intellectual Property Office.

For 2014 the Chamber of Commerce has planned to further develop this cooperation in such a way as to try and solve problems identified through the work done in these round tables. Formal suggestions for amendments of laws and meetings with high officials within the relevant ministries have already been scheduled and further steps have been planned for the coming months.     

By Mara Jankovic, Partner, Mikijelj Jankovic & Bogdanovic

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

Interview with Cigdem Dayan, the Chief Legal Counsel at ING Bank Turkey.

   

Cigdem Dayan

 CEELM: You started your career at Yapi ve Kredi. How did you get to ING?

CD: I started with Yapi ve Kredi in 1990, June, as a lawyer. And step by step I moved higher. And lastly I worked for Yapi Kredi as a Senior Vice President, and 2006, February, I transferred to Oyak Bank as an Executive Vice President. ING bought Oyak Bank shares, and one year later, the name was changed.

 CEELM: Why did you move to Oyak Bank?

CD: Koc Group bought Yapi Kredi and the structure was not clear. And the job that Oyak Bank offered me seemed a better opportunity for me.  

 CEELM: You never worked in a law firm. Some people think that working in law firms provides a basic level of training and exposure to a wide range of work, and that is useful for training and experience and development. Do you regret not having that experience, or was it not so important for you?

CD: I didn’t prefer it, because in 1990, Yapi Kredi was like a school. I learned lots of things at Yapi Kredi. I had the chance to see different cases, and it is a big bank, so …

 CEELM: Was it a big legal team?

CD: Yes. Working in a big bank gave me an opportunity to see interesting and different cases, and I gained a lot of experience.

 CEELM: So in some ways it was like a law firm – you got to learn a lot of different things?

CD: Yes. It was like a big law firm.

 CEELM: Does that mean that coming out of university you knew you wanted to work in banks?  That’s all you’ve done.  Did you know you wanted your career to be as a banking lawyer?

CD: When I went to university I thought I would stay in academia.  My professor wanted to work with me.  But I waited a long time for an open position.  Nearly one year I waited. At that point I thought, “maybe I’ll try to work outside,” and I applied to banks. Yapi Kredi called me, and I accepted their offer, and six months later a position opened at the university, and my professor called me – but I said “no, I like it here. I prefer to work with the bank.” [laughs].

 CEELM: So you didn’t think, “I’m going to be doing this for the next 20 years of my life”? You liked it, and …

CD: First I thought, “maybe five years will be enough for me.” [Laughs]. “Five years later I’ll move.”  But I couldn’t do it.

 CEELM: You’re still here.

CD: Yes, I couldn’t do it. Because I  do like it.

 CEELM: That’s my next question. How would you describe what you do?  I know you’re the Chief Legal Counsel.  But what do you do? What is your role in the bank, in your own mind?

CD: I and my colleagues are interested in all cases, all law suits all litigation against the bank or by the bank and legal follow-up, labor law, and consultancy, and all branches and the head office.  So we are interested in all of the bank’s legal issues. Of course sometimes we take a … oh, how can I explain … for instance, the Capital Markets Board is a very special area, and Competition Law is a very special area, and we have a consultant – an outside consultant to help with those matters.   

 CEELM: I want to ask a few questions about how you work with outside lawyers. How do you decide what work you keep inside the bank and what work you give to external counsel? When do you give work to external counsel?

CD: Two reasons. One is, if the subject is “specific” and requires a different expertise – for instance, as I mentioned before, matters involving the Capital Markets Board or Competition Law. These are very specialized areas, and Intellectual Property law is another one. We have external counsels to assist us on these subjects. Also for enforcement of non-performing loans, we work with outside law firms. Not counsel. Law firms. Not only in Istanbul. In different cities.

 CEELM: You have law firms in these cities you work with?

CD: Yes, local law firms. We prefer to work with local law firms.

 CEELM: Do you select the firms that you work with yourself?

CD: My colleagues – some of my colleagues – go to different cities in all over Turkey, to check the law offices we engage with, their office space, their equipment, how many people work with them.

 CEELM: These are some of your colleagues?

CD: Yes, I have an investigative team.

 CEELM: Really? That investigates the law firms?

CD: Yes. After we start to work with an external lawyer, for instance one year later, my colleagues make a visit plan. 

The current Register of Patents for Industrial Designs in Ukraine contains a huge number of humorous patents, from articles such as basic hangers, door handles, and rubber stoppers for bottles with medications, which have been in use worldwide for centuries and are known to any average person from their childhood, to the well-known and distinguishable designs of such items as Samsung and Apple tablets. All this has become possible due to the “user-friendly” design registration system in Ukraine, which does not provide for a substantive examination (the Patent Office does not check whether an article proposed for registration can be granted protection, and thus whether it is new and does not infringe upon a third party’s rights), and does not require publication of filed applications and decisions on grants of protection.

The current Intellectual Property Registration (IPR) system in Ukraine, particularly the industrial design registration system, creates a  legal framework that appears to encourage – or at least does not limit – a blatant abuse of rights and anti-competitive practices on the market. As a result, such abuses and anti-competitive practices are common.

Under Art. 461 of the Ukraine Civil Code an industrial design is patentable if it is new. At the same time, pursuant to Art. 14, Art. 18 of the Ukraine Law “On the Protection of Rights to Industrial Designs”, a patent is granted based on the results of a formal examination required to be performed by the person or entity applying for it, as the Patent Office does not itself conduct a substantive examination and does not check whether the design applied for registration is patentable. Furthermore, contrary to worldwide practice, there are no provisions concerning the publication of design patent applications to allow third parties to take necessary steps and to object to a grant of protection to designs that are either not new or infringe on existing rights.

As a result, with no examination for novelty and potential conflict with existing intellectual property rights, many objects are granted protection despite being essentially identical to objects that have been in use worldwide for decades or even centuries. 

As many years of this system in Ukraine have shown, such an approach spawns large-scale violations of the rights and interests of individuals and entities that operate fairly in the Ukrainian market. At the same time, the central problem in such a system is that invalid design patents may be cancelled only by courts with the appointment of a certified expert, which can make the proceedings both costly and time-consuming.

Thus, Ukraine’s imperfect registration system creates an environment suitable for unfair conduct, as some businesses improperly block access to the market by other interested parties, in the process achieving an undeserved and unwarranted competitive advantage. The most common blocking scenario used in Ukraine involves securing patent rights to non-patentable industrial designs and recording such patents in the customs IPR register, which enables their owners to prevent importation of competitors’ products and provides them with valuable market information, particularly regarding competitors’ import volumes.

These aren’t the only problems stemming from the existing system. Due to the aforementioned imperfections of the design patent system, fighting with its abusers can be essentially endless. For instance, while there may be an invalidation action pending before a court, the defendant (the owner of the challenged invalid patent) may file an identical application for exactly the same design and obtain a new patent. Thus, an interested party that is seeking invalidation of the previous patent before a court will have to proceed with an entirely different court action in order to have the new patent cancelled as soon as the court renders its judgment in the previous case, and so on, ad infinitum. 

The existing design registration system in Ukraine and unfair activities stemming out of it have already caused a chain reaction, in which other entities, who do not aim to create obstacles for other market subjects, proceed in exactly the same manner by securing knowingly invalid patent rights and registering them in the customs register as a defensive tool to maintain their position on the market. Consequently, the State Register of Industrial Designs of Ukraine currently contains a whole range of identical non-registrable (i.e. not novel) industrial designs which have also been recorded with customs. This undermines the very  basis and purpose of the IPR registration system, as well as the main goals and objective of IPR border measures.

In our practice, we recommend that companies challenge such patents in court and present claims for damages, where applicable. Furthermore, to resolve this issue at its roots, respective revisions to the laws, rectifying the situation, have been worked out and submitted to the Patent Office (the State Intellectual Property Service of Ukraine), and we hope that these proposals will be taken into account in the relevant revised draft law.    

By Antonina Pakharenko-Anderson, Managing Partner and Alexander Pakharenko, Partner, Pakharenko & Partners

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.