Article author: Branislav Krnetić, Senior Associate, PETOŠEVIĆ Serbia

 

On July 19, 2021, the Commercial Court in Belgrade issued a first-instance decision stating that the import and sale of car parts visually identical to those protected by industrial design registrations valid in Serbia constituted industrial design infringement. This is the first ruling of its kind in Serbian practice, and is therefore significant because it is likely to influence future decisions related to counterfeit car parts.

 

PETOŠEVIĆ Serbia represented the right holders, French car manufacturer Renault and its Romanian subsidiary Dacia, in court proceedings against a Serbian company that was distributing replacement headlights, side rearview mirrors and grilles for the Dacia Sandero car without the plaintiffs’ consent. The car parts were visually identical to the original ones protected by Renault’s designs and they bore Dacia’s trademarks.

 

First, an attempt was made to settle the matter out of court. A Cease and Desist letter was sent to the Serbian company, who refused to comply with the plaintiff’s demands. A request for securing evidence was then filed with the Commercial Court in Belgrade. The court granted the request, but the defendant refused to allow PETOŠEVIĆ Serbia representatives and Commercial Court officials into their premises. Finally, a lawsuit was filed with the Commercial Court on November 15, 2017.

 

Industrial design infringement

During the proceedings, which lasted nearly four years, two court-appointed intellectual property expert witnesses prepared expert opinions confirming both design and trademark infringement. A court-appointed financial expert witness determined the damage caused by the infringement based on the number of counterfeit car parts sold by the Serbian company between 2014 and 2020 (200 headlights, 30 side rearview mirrors and 71 grilles).

 

Finally, the Commercial Court ruled in favour of the plaintiffs and, for the first time in Serbian practice, stated that the import and sale of replacement car parts visually identical to those protected by industrial design registrations constituted industrial design infringement. The fact that the court also awarded damages in this case is important because it is very rare in Serbian practice for a court to award damages caused by intellectual property infringement, particularly design infringement. The Commercial Court’s decision may be appealed, but it appears unlikely that the decision would be overturned.

 

A significant ruling

This ruling is significant because it will allow right holders to invoke it in their struggle against this type of infringement, potentially beginning to put an end to fake auto parts. There have been no rulings of this kind in Serbian practice so far and the European practice related to design infringing car parts is itself inconclusive.

 

FICPI’s view and involvement

FICPI is the only organisation exclusively for independent IP attorneys, and is driven by a strong shared interest among like-minded people to promote common solutions and advocacy for private practice. It uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members.

Next steps

  • Keep up to date with developments through the regular FICPI Newsletter, blogs and articles on site.
  • The regular webinars feature industry experts on topics designed to strengthen the practice of the independent IP attorney. View and book here.  
  • FICPI also offers opportunities to get involved, network with peers and advocate on issues from professional excellence, to training, and areas of legislation. View our committees under 'organisation' on the homepage

 

Images: for illustrative purposes only

 

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