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Trademark Protection In The Metaverse

The emergence of new technologies, such as Blockchain, and the phenomenon of NFTs and the Metaverse, raises questions of protection and enforcement of intellectual property rights in a new, virtual environment.

Special emphasis is put on trademarks, as they generate the greatest interest and business opportunities for the brand owners, at the same time presenting the biggest challenges. While we know that the basic function of a trademark is to identify the source or the origin of goods thus enabling consumers to distinguish goods or services of one company from goods or services of another company in the course of trade – these goods and services are now being commercialized in the virtual world.

How will brand owners use and protect their registered trademarks, how will they register new ones and prevent third party infringements in these new spaces? Simply put, how are they going to tackle the challenges which arise from trademarks registered in the traditional, real world for real goods and services being used for virtual goods and services?

Let’s start with basic definitions

  • NFTs (Non-Fungible Tokens) are defined as digital assets, recorded in Blockchain technology, associated with an item of value that can be bought or sold – a unique piece of content on the Internet, such as an image, video, or audio file. As a unique unit of data, it cannot be copied, substituted, or subdivided, and is used to certify authenticity and ownership.
  • Metaverse is the “sum of all virtual spaces”. It is defined as a virtual-reality space in which users, as avatars, interact with other users and a computer-generated environment. Basically, it is a simulation of the real world in which people participate as digital avatars. The term “Metaverse” is attributed to Neal Stephenson, who used it in the 1992 novel Snow Crash, as a compound of “meta” (Greek prefix meaning “after” or “beyond”) and “universe”. Most of us, however, first heard it in 2021 when Facebook rebranded to “Meta” and CEO Mark Zuckerberg said, “I believe the Metaverse is the next chapter for the Internet.”

Practical example

Let’s now use these terms to illustrate the issues on a practical example. A brand owner from the fashion industry has a trademark registered in Class 25 of the Nice Classification of Goods and Services which protects products – clothing, or to be more precise, “real” clothing. He wishes to expand his business to the Metaverse. In the Metaverse, however, clothing is a “virtual” version of the product, represented by an NFT.

Trademark protection does not automatically extend to the Metaverse and NFTs, and the European Union Intellectual Property Office (EUIPO) has taken the approach of classifying virtual goods as digital content that can be registered in Class 9 of the Nice Classification. However, both terms “virtual goods” and “NFTs” are not acceptable on their own and need further specification. Virtual goods must be specified by indicating the content to which the virtual goods relate (e.g. downloadable virtual clothing, handbags, jewelry). NFTs also need to be specified by indicating the type of digital item authenticated by the NFT (e.g. downloadable computer software in the nature of NFTs). Services relating to virtual goods and NFTs are classified in line with the traditional established principles, i.e., need to be clear and precise (e.g. Class 35 – retail services featuring virtual goods; Class 36 – financial transactions via blockchain; Class 41 – entertainment services, namely, providing online non-downloadable virtual clothing; Class 42 – providing virtual computer environment). Due to these requirements, we are looking at potentially enormous lists of applied goods and services, but classification will, in time, become more standardized, and, to this end, EUIPO is preparing new 2023 Guidelines for examination. When it comes to legislation, current provisions and principles are applicable in the Metaverse, provided changes in classification system and correct classification of goods and services. Naturally, as technology advances, the existing IP legislation needs to adapt, and trademark law is going to change and evolve accordingly. There are already several trademark disputes arising from NFTs, where we expect landmark decisions to provide directions for NFT-related trademark claims.

The growing interest of the brand owners in new trademark applications is well reflected in EUIPO’s statistics. Namely, there were 1 277 Applications using NFTs in 2021, 1 157 Applications using NFTs and 205 Applications using “Metaverse” in 2022 (by September). Brand owners are undoubtedly aware that they cannot rely on existing trademarks and need to update their trademark portfolios. Big players in the fashion, sports and entertainment industry are leaders in trademark re-filing.

Metaverse, while a huge opportunity for the brand owners for business growth and engaging new consumers, comes with a challenge to protect not only their assets but to protect the consumers as well. An effective protection and enforcement mechanism in the Metaverse is absolutely necessary and can be secured only by an adapted legal system. All brand owners need to re-evaluate their IP portfolios and filing strategies to be able to enforce their rights against any third-party infringements in the Metaverse, which will only continue to expand.

Author: Ivana Knezevic, Senior Trademark & Patent Attorney

This article is to be considered as exclusively informative, with no intention to provide legal advice. If you should need additional information, please contact us directly.

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Trademark Law of Montenegro – Amended Yet Again…

The Law on amendments published in the Official Gazettes of Montenegro Nos. 44/2012, 18/2014, 40/2014, 2/2017 brought numerous changes to the Montenegrin Law on Trademarks (“Official Gazette of Montenegro”, No. 72/2010) (“TM Law”). However, the new Law on Amendments of the Law on Trademarks which was published in the Official Gazette of Montenegro No. 3/2023 on January 10, 2023 and which entered into force on January 18, 2023, introduced significant novelties like no other before. The aim of the recent amendments is to harmonize national legislation with the legislation of the European Union, namely Directive (EU) 2015/2436 of the European Parliament and the Council on harmonization of the legislation of member states on trademarks.

The most significant novelties introduced by the Law on Amendments are as follows:

  • deletion of the condition that only a mark which can be represented graphically can be afforded protection as a registered trademark;
  • expansion of the list of absolute reasons for refusal and other relative grounds of refusal, i.e., invalidation of a trademark, in the part that refers to the protection of traditional expressions for wines, guaranteed traditional specialties and plant varieties;
  • expansion of the scope of rights held by a trademark holder in relation to use of its right, in relation to goods in transit and preparatory actions related to the use of packaging or other means;
  • changes in the procedure related to objections filed by third parties and oppositions to trademark registration before the competent authority;
  • compliance with the provisions of the Singapore Treaty on the Law of Trademarks (with regard to the continuation of the procedure, restitution in integrum, correction of errors and license);
  • the procedure for registration of collective marks has been specified, especially parts related to refusals thereof;
  • more detailed calculation of terms for proving the use of international trademarks in opposition, invalidation or cancellation proceedings; 
  • changes in the proceedings for invalidation/cancellation of a trademark, as well as a change of the competent authority before which the said procedures will be conducted, from the court to the competent administrative body;
  • more detailed arrangement of the inspection supervision procedure and the procedure of destruction of temporarily seized goods;
  • the provisions of the Law regulating administrative procedure now contain specifics that reflect the obligation to harmonize this area with EU law and international standards and regulate certain issues differently, compared to the provisions of the Law on administrative procedure.

Unlike its predecessors, the new amendments have placed focus on administrative competent bodies regarding the prosecution and enforcement of trademark rights in Montenegro. The aim of this legal document is to ensure greater legal efficiency and legal protection of the Trademark Holder and to fulfil commitments deriving from the EU accession proceedings.

Author: Rajka Vukcevic, Lawyer

This article is to be considered as exclusively informative, with no intention to provide legal advice. If you should need additional information, please contact us directly.

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The End of Exclusive Jurisdiction of Belgrade Courts in Intellectual Property Disputes in Serbia?

During the Third conference of Belgrade BAR Association held in Zlatibor on November 5, 2022, in a series of proposals on changes to judicial laws, a proposal was made to abandon sole competence of Belgrade courts for handling of IP disputes. According to the proposal, amendments are to be added to the existing Law on Seats and Competences of Courts and Public Prosecutions (“Official Gazette of RS”, No. 101/2013), thereby terminating jurisdiction of the Belgrade High and Commercial Courts with regards to intellectual property matters and instead transferring such competence to the local higher and commercial courts, all in accordance with generally applicable jurisdictional rules.

Although supporting the idea of disburdening of Belgrade courts, which for years have been obviously disproportionately burdened by the number of litigation cases, is good in theory, we also believe that such proposal should be considered carefully while bearing in mind consequences that such a solution could have on the entire system of protection of IP rights in the Republic of Serbia.

In that sense, we are of the opinion that prior to passing of relevant amendments, it would be necessary to:

  • Determine precise statistics on the number and duration of intellectual property disputes;
  • Establish whether the disputes in question really contribute, and to what extent, to the workload of Belgrade courts;
  • Consult comparative practice and consider previously announced need for specialization of individual departments within Higher and Commercial Courts in Belgrade;
  • Analyze the capacities for expertise in disputes in this area, bearing in mind insufficient number of registered experts specialized in the field of intellectual property; and
  • Consult representatives of creative industries, foreign investors, and other entities that would be affected by such decision.

If, after the above-mentioned analysis, the reasons in favor of said proposal would still prevail, we believe that the right way for its implementation would be strategic and responsible planning of necessary time, human, and financial resources, required to implement proposed change without detriment to the quality of IP disputes. In this sense, we believe that additional training of judges from local courts would also be necessary, especially given the accelerated development of the IP, which is most directly related to the general digitalization of society and the economy.

Author: Ognjen Pantelic, Counsel / Attorney at Law

This article is to be considered as exclusively informative, with no intention to provide legal advice. If you should need additional information, please contact us directly.

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Kraj isključivoj nadležnosti beogradskih sudova u sporovima iz oblasti prava intelektualne svojine u Srbiji?

Na Trećem advokatskom savetovanju članova AK Beograd, održanom na Zlatiboru 05.11.2022. godine, u nizu predloga o izmenama pravosudnih zakona koje bi trebalo da omoguće ravnomerno opterećenje prvostepenih sudova na teritoriji Republike Srbije, iznet je i predlog da se u cilju rasterećenja beogradskih sudova ukine koncentracija njihove nadležnosti za vođenje sporova iz oblasti intelektualne svojine. Prema navedenom predlogu, izmenama i dopunama Zakona o sedištima i područjima sudova i javnih tužilaštava (“Sl. glasnik RS”, br. 101/2013) bila bi ukinuta isključiva nadležnost beogradskog višeg i privrednog suda u sporovima iz oblasti intelektualne svojine, te bi u tim sporovima ubuduće sudili viši i privredni sudovi na teritoriji cele zemlje u skladu sa opštim pravilima o nadležnosti sudova.

Ne osporavajući potrebu da se izmenama pravosudnih zakona doprinese rasterećenju beogradskih sudova koji su godinama unazad očigledno nesrazmerno opterećeni brojem predmeta u parničnoj materiji, verujemo da gore predloženo ukidanje koncentracije nadležnosti treba uzeti u razmatranje sa posebnom pažnjom, imajući u vidu da potencijalno velike i ne nužno pozitivne posledice koje bi takvo rešenje moglo da ima utiču na ceo sistem zaštite prava intelektualne svojine u Republici Srbiji.

Smatramo da bi pre donošenja predmetne izmene zakona bilo potrebno:

  • Utvrditi preciznu statistiku o broju i vremenskom trajanju sporova iz oblasti intelektualne svojine;
  • Ustanoviti da li predmetni sporovi zaista doprinose, i u kojoj meri, opterećenju beogradskih sudova;
  • Konsultovati uporednu praksu i uzeti u obzir ranije najavljivanu specijalizaciju pojedinih odeljenja u okviru Višeg i Privrednog suda u Beogradu upravo radi unapređenja njihovih kapaciteta za rešavanje sporova u oblasti intelektualne svojine;
  • Analizirati kapacitete za veštačenje sporova u ovoj oblasti s obzirom na nedovoljan broj registrovanih veštaka specijalizovanih za oblast intelektualne svojine i njihova sedišta;
  • Posebno konsultovati predstavnike privrede, kreativnu industriju, strane investitore i druge subjekte na koje bi ova odluka uticala.

Ukoliko bi nakon gore navedenih analiza prevagnuli razlozi u korist iznetog predloga, verujemo da bi pravi put bio strateško i odgovorno planiranje potrebnog vremena, kao i ljudskih i finansijskih resursa, neophodnih da se predložena izmena sprovede bez pada kvaliteta suđenja u sudskim sporovima iz oblasti zaštite prava intelektualne svojine. Verujemo da bi dodatna obuka sudija van beogradskih sudova za postupanje u sporovima iz ove oblasti bila neophodna, posebno ukoliko se uzme u obzir činjenica ubrzanog razvoja oblasti intelektualne svojine koja je najdirektnije povezana sa opštom digitalizacijom društva i privrede.

Autor: Ognjen Pantelic, Counsel / Attorney at Law

Ovaj članak je isključivo informativne prirode i ne predstavlja pravni savet. Ukoliko su Vam potrebne dodatne informacije, budite slobodni da nas kontaktirate.

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New Law On Trademark In Kosovo*

On July 28, 2022 new Law on Trademarks entered into force in Kosovo. The main purpose of this change was harmonization of Kosovo local legislation with the Directive 2004/48/EC on the enforcement of intellectual property rights. New law introduced several significant changes in trademark protection in Kosovo which will have important impact on trademark’s owner position.

The changes could be divided in two groups: first one is related to trademark application procedure, while the second is referring to trademark enforcement.

Changes in trademark application procedure:

1. Graphical representation of trademark is not required any more

It is now envisaged that a trademark can be any mark that:

  • can distinguish the goods or services of one trademark owner from those of another, as well as
  • it is represented in register in such a way to enable the competent authorities and the public to define the object of protection clearly and precisely.

2. List of goods and services have to be clearly specified

It is not admissible any more to apply only for class headings in list of goods and services, but it is mandatory now to specify goods and services the protection is sought for.

3. Absolute grounds for refusal or invalidity

The list of absolute grounds for refusal or invalidity is now extended to include registered designations of origin or geographical indications. Protected traditional wine expressions and protected plant varieties will also be considered as an obstacle for registration of a new trademark for the same goods and services.

4. Relative grounds for refusal

The novelty is the introduction of bad faith as relative ground for refusal or invalidity of a trademark. Registration of a trademark can be refused, or registered trademark can be declared invalid in case that the trademark owner/applicant applied for a trademark in bad faith.

4. Restoration of rights

This remedy is now clearly prescribed by the Law on trademarks. It should provide the last chance for the Applicant to take necessary actions to avoid loss of rights.

Changes related to trademark protection:

1. Citation of trademarks in the dictionary

The trademark holder is now entitled to request from the publisher of a dictionary, encyclopaedia, or similar material to make a reference in the next edition indicating that the trademark used in a text is a registered trademark. This should protect the trademark from dilution that could happen, once the public starts identifying trademark with generic name of the goods or services for which the same is registered.

2. Extensions of rights acquired by a trademark

Exclusive right of trademark owner is extended by adding few more situations when such is entitled to prohibit use of its trademark:

  • when it is used as a trade name of the economic entity or part of the trade name;
  • when third parties importing goods in Kosovo, when such goods, including their packaging, come from the countries in which the right of trademark owner has not been exhausted;
  • in preparatory actions in connection to the use of packaging and other means that may cause violation of rights (affixing a mark identical to or similar with the trademark on the packaging, or their importation, offering, placing on market of storing for those purposes).

3. Hybrid principle of exhaustion of rights

The most significant change that will have an impact on future economic environment in Kosovo and scope of powers of trademark owners is the introduction of broad exceptions of principle of national exhaustion of trademark rights It is now envisaged that a trademark owner cannot prohibit the use of his trademark in relation to the products he had placed in:

  • Kosovo;
  • any member state of the European Union;
  • any member state of the European Economic Area;
  • any state of the Western Balkans region;
  • any state with which Kosovo has a free trade agreement or trade facilities.

This amendment triggers controversies as:

(i.) it has not been subject of proper public discussions in professional community prior to its enactment; further amendments may be possible in the near future;

(ii.) the exceptions of the principle of national exhaustion of trademark rights are envisaged too broadly, in the sense that the principle of national exhaustion is only de iure proclaimed, but de facto these exceptions introduce the principle of international exhaustion of trademark rights; and

(iii.) this solution is not in line with EU Directive.

4. The non-use defence in infringement proceedings

During the infringement proceedings the defendant can request from the trademark owner to provide a proof of trademark use for five years before initiation of an infringement action. In case that trademark owner does not provide relevant proof, his claim against defendant will be dismissed. The same request defendant could use in preliminary injunction procedure.

5. Appeal to market inspectorate

The trademark owner now has an option to initiate administrative procedure before Market Inspectorate for violation of its trademarks. It still remains unclear what scope of protection the trademark owner could expect.

6. Change of time frame for appeal before IPO

Time frame for filing the appeal against IPO decision is now extended to 30 days instead of previous 15 days.

7. Measures for termination of trademark infringement

Once the trademark infringement is established the Court has an option to issue a statutory fine in the amount of five thousand (5,000) to ten thousand (10,000) euros against the infringer to prevent the continuation of the trademark infringement.

On the other hand, the court may order financial compensation to the trademark owner instead of the seizure and destruction of infringing goods by infringer’s request in some specific situations.

Most of these amendments represent improvement of trademark environment in Kosovo. It is yet to be seen how these amendments will be applied in practice by competent authorities, especially the principle of exhaustion of trademark rights.

Authors:

Milica Mancic, Counsel / Attorney at Law

Vladimir Marenovic, Senior Counsel / Attorney at Law

This article is to be considered as exclusively informative, with no intention to provide legal advice. If you should need additional information, please contact us directly.

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Milos Petrasinovic – Drones In Rainforest Research

World Intellectual Property Day – IP and Youth: Innovation for a Better Future

Young people are an incredible, and unfortunately in a large part, an untapped source of creativity. However, their fresh perspective, energy, curiosity and attitude are ready for reshaping traditional approaches and encouraging action for innovation. Every April 26, the World Intellectual Property Day is celebrated, and this year with the theme: “IP and Youth: Innovation for a Better Future”.

Generations that are now in their mid-20s grew up in the age where the boundaries of the physical and digital worlds are blurred. This has shaped them into a generation that is so far probably the most innovative and creative one.

Legal aspect of innovation must however not be neglected; hence the World Intellectual Property Day’s campaign is there to offer young people the opportunity of better understanding how different intellectual property rights – trademarks, industrial design, copyrights, patents, plant varieties, geographical indications, trade secrets and more – can support their careers and ambitions in the quest for a better tomorrow.

And it is in the honor of  World Intellectual Property Day that we share with you an inspiring story of young Milos Petrasinovic (28), co-owner of PR-DC – a research and development center, and a modern light-aircraft production facility. Miloš is also a teaching assistant at the Faculty of Mechanical Engineering, University of Belgrade, Department of Aviation.

Miloš, tell us a bit more about your path as an innovator. How did you come to be what you are today?

My father is a professor at the Faculty of Mechanical Engineering, University of Belgrade, Department of Aviation, my mother also graduated from this faculty and worked at the Military Technical Institute. There are four of us, three brothers and a sister, and all four of us are aeronautical engineers. I have been practically an “entrepreneur” since my earliest days. I can say that I started as a child – helping my parents with various jobs. I entered the Faculty of Mechanical Engineering when I was only two months old to receive a children’s package for the New Year, and when I entered the amphitheater at the age of 19, I instantly felt as if I had been born there. Academy success soon followed: I was the best student of the generation, on all the exams from undergraduate to doctoral studies (66 of them) I got the highest grade – 10. We had various competitions, awards, etc. Everyone pats you on the shoulder and says that you are great, but there were also some “negative” comments, stating that there is not much room for application of all that knowledge in Serbia. Aviation is very specific and “narrow” when it comes to opportunities. You can’t just instantly start a new Airbus or a Boeing, instead you have to gain experience by working at a company. The resentment in us was caused by the fact that everyone praised us and at the same time said that there were many impediments that we would face. Then we said, okay, we will now start the first company in Serbia that makes drones. And we started that about five or six years ago within a family business. I also brought two of my colleagues from the faculty, and the, after a while, more colleagues from my generation. The three of us started a daughter company of our family company, which was primarily focused on robotics and drones. We worked day and night for three years. I would finish my 8 am to 4 pm family business and then would continue working on the drone projects.

Aviation is so demanding that you can have trillions of euros, but if you don’t have people, an idea and good contacts, you can’t achieve much. In this industry, it is sometimes difficult to just get a conversation with someone. In the first years, all the doors were closed to us, as soon as you say that you want to make a drone, everyone tells you that you have no conditions here, you should do something that is less sophisticated. Being young was an obstacle then, and still is today, given the seriousness of the industry and my age, and the two combined were even a greater obstacle.

Fast forward to this year where we will have the opportunity to represent Serbia at the largest fairs in London, Paris and further around the world, allowing us to show what we and other young people have done here. We have already been to Abu Dhabi and Dubai and we have achieved great success.

How can drones shape a better, sustainable future? For what purposes other than commercial do you see their role?

What we are dealing with are electric aircrafts that aim to solve various problems – either those surely awaiting us in the future, or those whose existence we are still not aware of. These solutions can be human-related or completely non-human. For example: results and samples can be transferred between two hospitals, something that will speed up the process – electric mobility where you can fly over the crowds in Belgrade or Los Angeles. Humans may and may not be involved.  We are also developing aircraft that can play a significant role in firefighting operations etc.

What we are doing is a process in which we demonstrate how our aircrafts can be used for these purposes, and we continue to cooperate with public services on improving or training people who are currently engaged in using them. It is a one thing to provide clear information to the firefighter on where the hot spot is, and a completely another is the active participation, such as extinguishing fires with, for example, balls of powder throwing out water or with the help of other means of fire extinguishers. There is also the task of equipment delivery. A large number of fires must be extinguished from the inside, not from the outside, and in such situation with our IKA-20 aircraft there is a possibility of transferring the tools and equipment to a firefighter who will thus be alleviated from carrying for example ten pounds of equipment while climbing to the tenth floor. We can enable the aircraft to deliver the equipment to the required place to help firefighters climb the building unhindered. Also, during the flood or in some other rescue operations, we could with the help of our remotely operated aircraft pull a man out of the water,. We are working on all of these aspects.

How can this type of aircraft help make some of the industries currently known as major polluters sustainable?

Paradoxically, the biggest problem of aviation today is that its foundations have been solidly established. What I mean by that is that you have conventional aircrafts that have been evolving for 50 or 60 years. These aircrafts have been in the development for so long that they have this ailment of being burdened by their own history. I often say to my students in the design class: “Imagine you don’t know what an airplane looks like, would it look like how airplanes today do”? It’s called “versioning” – the bird looks a lot like a plane, but it doesn’t necessarily mean that in the future, a passenger plane will look like that at all. Development is slow, and if you start to develop some systems to make that plane better, more efficient, to consume less fuel, to use sustainable materials, it is very difficult because it is difficult to “interfere” with already developed system. But, if you start from smaller systems from scratch, ie. from drones, and then develop new technique and technology on them, it is significantly easier to transfer that technique and technology to large systems. If we develop good batteries, electric motors and different energy sources, it will be tied to smaller mediums first, and then in the future, we hope to transfer that same technology onto passenger planes for instance. The best example of this is that many of today’s passenger car systems were developed thanks to Formula 1. You have systems that had to be used in comeptitive sports first, only then to become part of passenger cars. Today you have systems for braking, skidding, etc. which are a consequence of someone investing in this narrowly specific sport.

You are a sponsor of the Creative Pen participating in the XPrize Rainforest competition, tell us more about it?

That’s a great story. First of all, Aleksandra Nedeljkovic, the founder of the Creative Pen School, has always been open to projects in which she can point out to children that they need to think about technological development and how it can positively affect the future of our planet. They went to various competitions, for example in robotics, and they were very successful, thanks to, amongst other things, my professor and mentor who helped them a lot in one of those competitions. And then he connected me with them because they achieved something amazing. Namely, they were contacted by XPrize, a body that organizes many competitions, one of them is the Rainforest competition in which you need to figure out how to better explore the rainforests. We have not actually been able to explore the rainforests, because they are very inaccessible and there are no machines that can go so deep into the forest. On the other hand, we are destroying them. They say that we have discovered only 10% of natural remedies and the flora and fauna found in rainforests in general, so on the one hand we have some problems that we are trying to solve by cutting them down, and on the other some solutions are to be found in those rainforests.

“We will come to a point where we will destroy

what we have not yet even comprehended.”

The team was invited from the XPrize board because they had been noticed at other competitions and asked if they might want to design a project and participate in the XPrize Rainforest. It is interesting that companies from all over the world are participating, and the prize is 10 million euros. Over 300 teams from all over the world applied and they entered the top 36 in the world; only 5 teams from Europe were shortlisted. The team members are literary children. We are grateful to them because they made a solution so that drones enter the rainforests and scan them. The owner of the Creative Pen and the leader of the team saw us on television and contacted my professor. He connected us and I got into it with great enthusiasm and promised to do my best to win. We are now members of their team. We are currently doing extensive research and constructing a drone that will be able to fulfill this important role. The project will last for 5 years.

Also, during the development of this project, we put a lot of thought into the intellectual property aspect of things.

How do you, as a lecturer and assistant at the Faculty of Mechanical Engineering in Belgrade, at the Department of Aviation, encourage your students to think towards a sustainable future?

I strive for them to have a healthy perspective, to be the ones to manage their careers, to pursue their goals, and to be independent. To make independent decisions about what they will do, and to not accept any half-done jobs and what is imposed on them. And then, when they get into technique and technology, of course, they choose the most modern methods, materials etc. As of yet, there is still no sustainable alternative in aviation, no matter how much we are in favor of a greener future, we all end up having to sit on a jet plane. It’s somewhat depressing.

How clear is the importance of protection of intellectual property rights to your students?

They are equally unaware of the pros and cons of IP. In my personal opinion, this is a problem in the transition of political systems that have taken place in the region, as well as the unwillingness of us who deal with education to convey it to the students in the right way. Even today, people think that everything in front of their eyes can be theirs and that they do not have to explain to anyone where they took it from. The good side of our profession that deals with education is that proper care is taken in terms of citations, plagiarism, an aspect with which students are well acquainted. On the other hand, they are less aware of the importance of intellectual property rights related to patents, some solutions that they are allowed to apply on their machines and software. Young people need better ways to protect their solutions and turn their ideas into reality. This, of course, leads to higher income, new jobs, and most importantly to have a positive impact on the world around us.

How do you manage to preserve and protect your ideas today? What do you think is most important during the development, and placement of ideas?

It is quite a personal matter and a lot depends on the personal path we have gone through. What I did and what I do now: aggressiveness in approach. I generally protect myself with my knowledge and experience which no one can ever take away from me,. I’m not afraid to share the idea with everyone. I even believe that when I share it with everyone, it shows that we are in some way confident in our work. We believe that if we hide it, it has its reason why we will not show it, because when you show it, you open yourself to the prospect of others discovering your mistakes.

Could you give some guidance and advice to your young colleagues?

We have achieved everything through knowledge and deep reflection. I would advise them to think carefully about what life has to offer. We were in situations where we were offered various jobs that would take us so much time that we could not work on our passion projects. You can practically get lost on that path because you are chasing wrong things – it is more difficult to choose the right option that is in line with your desired path. Learn how to reject everything but the project that is your essence.. We turned down a lot of things that just led in the wrong direction and kept our focus.

Photo credit Ivana Cutura

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Review of the copyright pretection of translated works in Serbia

Originality requirement – review of the copyright protection of translated works in Serbia

Copyright protection under national law is determined by the same conditions known to most of the European countries: the creation has to be original and has also to be expressed in a fixed form. Bearing in mind that the copyright holder acquires protection once the work is created, interpretation of the mentioned requirements is of crucial importance for the copyright holders. There are different approaches to the originality requirement in practice, despite the fact that there is a high level of harmonization when it comes to the owner’s entitlements and available mechanisms of legal protection. Whilst EU members tend to follow the ruling of CJEU in Infopaq v. Danske (2009), whereby the originality requirement has been interpreted as author’s own intellectual creation, some common law countries on the other hand, have adopted a similar but yet somewhat different definition of originality: a work based on author’s skill and labor being considered as original.

The question of originality of work is especially challenging when it comes to derivative works. These are the works created based on an already existing work of authorship, which the law defines as works containing characteristic elements of an underlying (basic) work. Bearing in mind that derivative works are being created based on already existing ones, author’s space for expression of his own originality becomes somewhat narrowed and limited by the characteristics of the underlying work. Nevertheless, it is indisputable that derivative works enjoy copyright protection under identical conditions as underlying works. Given that translations could be considered as derivative works, translators are faced with a complex issue of originality of their work, particularly bearing in mind that the quality of a translation usually depends on its closeness to the original text being translated.

ZMP attorneys have organized and held several lectures on copyright protection, dedicated to the translators and court sworn interpreters (https://www.sudskiprevodiocisrbije.com/strucni-sastanak-autorsko-pravo-izmene-zakona-i-zastita-na-internetu/ and https://www.sudskiprevodiocisrbije.com/strucna-usavrsavanja/obuka-autorskopravni-aspekti-prevodilacke-delatnosti/). On such occasions, we discussed about most common questions and problems translators and interpreters face in their practice; and as a result of such meetings we have summarized several questions and answers which explain usual dilemmas regarding copyright protection that they face:

Is every translated work a work of authorship?

No. Although the Law explicitly enumerates works that are subject to the copyright protection, including therein translated works, it does not imply that every translation can be copyrighted. Same as any other work of authorship, translation has to be original and expressed in a fixed form. Moreover, official translations of legislative texts and official documents of the state authorities and of the authorities performing public functions are explicitly excluded from the copyright protection.

How is the originality of a translation assessed, bearing in mind that translators tend to resemble the basic text as close as possible?

Depending on the type of text being translated, translators retain certain degree of freedom when it comes to the choice of words, their order, and the organization of punctuation marks. Such freedom is largest when dealing with the works of literature, whereas it is often much narrower when it comes to official texts. Originality of translation of official texts also depends on the development level of terminology within a language, for a particular field where it is applied. When translators do not have a freedom of choice between different words for one same term, the originality of the text is to be assessed solely with regards to the section where such freedom existed.

What would happen if two translators create almost identical translations, independently of each other? Is there found to be copyright infringement of the translator who created the translation first?

No. Originality in copyright is not equal to novelty. Theoretically, it would be possible for two authors, to create two identical works of authorship independently of each other. Such possibility would be even more likely with regards to translations and similar works which are created with an attempt to resemble the existing work, or in case of photography – character, item, or a landscape. The assessment as to whether there is an intentional copying of an existing work, or as to whether there is an accidental creation of an identical or substantially similar work, is made taking into consideration all of the facts of the case at hand. Authors are often burdened with a requirement to provide proof of circumstances which confirm originality of their creation, and vice versa – it is allowed to prove all facts implying that the author had conscientiously copied somebody else’s existing work.

Can electronic plagiarism checkers establish existence of copyright infringement?

No. Electronic plagiarism checkers of the prior published papers available in the databases do not assess the existence of copyright infringement, but rather the amount of text which matches with the existing works. Even when there is a high percent of matching with a previously published work, copyright infringement would still depend on other factors: nature of the prior work in question, existence and scope of its copyright protection, as well as numerous other factors. In that sense, for the purposes of assessing copyright infringement, it would be necessary to verify what the exact percentage of overlapping is, what is the nature of the parts of the text in question, do they themselves enjoy copyright protection.

Is there any percent of other person’s text which is allowed to be used?

No, the law does not specify the percentage of other person’s work which is to be used freely without author’s consent. Even when the prior text is cited, it is necessary to meet the conditions prescribed by the law – namely, that the work is published, that it is a short excerpt of a prior work, that the author’s name is indicated, as well as the title, etc.

Is it necessary to record a translation in order to obtain copyright protection?

No. Recordal of the works of authorship is recommendable only to the extent that it eases the proof of authorship and the time of creation of the work in case of any potential legal dispute. However, when it comes to the copyright protection of translations, it occurs the very moment the work is created, same as with any other type of work.

Who decides whether the work enjoys copyright protection and whether there is a copyright infringement?

The court has exclusive jurisdiction over this question. When dealing with translations of official texts, the court experts are usually hired, as they are familiar with the terminology of the filed in question, and can assess the level of author’s freedom as well as the amount of his personal contribution to the overall creation. Given that domestic practice has not yet provided us with a proper interpretation of the originality requirement with regards to the translated works being considered as the works of authorship, the originality of translators is being assessed in the same manner as any other authors would be – based on the existence of author’s own intellectual contribution to the work in question.

Author: Mina Jovanovic, attorney at law

Uslov originalnosti – autorskopravna zaštita prevoda u Srbiji

Zaštita autorskog dela je i u domaćem pravu uslovljena okolnostima koje poznaju gotovo sve evropske države: neophodno je da postoji originalnost duhovne tvorevine koja je predmet zaštite i određenost forme u kojoj je izražena. Budući da se autorsko pravo stiče samim nastankom dela, tumačenje sadržine pomenutih uslova od suštinskog je značaja za titulare. U praksi postoje različiti pristupi uslovu originalnosti, iako je zaštita autorskih dela relativno ujednačena kada je reč o ovlašćenjima titulara i mehanizmima pravne zaštite. Dok članice Evropske unije slede tumačenje Evropskog suda pravde koji je u predmetu Infopaq v. Danske (2009) odredio da je originalno autorsko delo ono koje predstavlja autorovu ličnu intelektualnu tvorevinu, zemlje common law sistema usvajaju blisku, ali ipak drugačiju definiciju originalnosti; originalnim se smatra duhovna tvorevina koja je nastala ulaganjem ličnog rada ili veština od strane autora.

Pitanje ocene originalnosti dela posebno je izazovno onda kada se ceni originalnost dela prerade – derivativnih autorskih dela. Reč je o tvorevinama koje nastaju preradom već postojećeg autorskog dela, koje zakon definiše kao dela u kojima su prepoznatljivi karakteristični elementi prerađenog (izvornog) dela. Kako izvedena dela nastaju na osnovu već postojećih autorskih dela, prostor autora da doprinese originalnosti bitno je sužen i ograničen karakteristikama osnovnog dela. Ipak, nesporno je da i dela prerade uživaju autorskopravnu zaštitu pod jednakim uslovima kao i izvorna dela. Budući da prevodi predstavljaju vrstu derivativnih dela, za prevodioce je od posebnog značaja pitanje ocene njihove originalnosti – ovo posebno stoga što kvalitet prevoda često zavisi i od što vernijeg prikaza osnovnog teksta koji je predmet obrade.

Advokati ZMP-a u Srbiji su u nekoliko navrata održali predavanja o autorskom pravu posvećena sudskim tumačima i prevodiocima (https://www.sudskiprevodiocisrbije.com/strucni-sastanak-autorsko-pravo-izmene-zakona-i-zastita-na-internetu/ i https://www.sudskiprevodiocisrbije.com/strucna-usavrsavanja/obuka-autorskopravni-aspekti-prevodilacke-delatnosti/ ). Tom prilikom razgovarali smo o najčešćim problemima sa kojima se prevodioci susreću u praksi, te kao rezultat te saradnje u nastavku sumiramo nekoliko pitanja i odgovora koji rešavaju ključne dileme o autorskopravnoj zaštiti prevoda:

Da li je svaki prevod autorsko delo?

Ne. Iako zakon izričito navodi prevod kao jedan od nabrojanih predmeta zaštite autorskim pravom, to ne znači da će svaki prevod nužno uživati zaštitu. Kao i svako drugo delo, neophodno je da prevod bude originalna duhovna tvorevina autora, te da je izražen u određenoj formi. Takođe, službeni prevodi propisa i službenih materijala državnih organa i organa koji obavljaju javnu funkciju izričito su izuzeti od autorskopravne zaštite;

Kako se ceni originalnost prevoda, imajući u vidu da prevodilac nastoji da što vernije prevede izvorni tekst?

U zavisnosti od vrste teksta koji je predmet prevoda, prevodioci imaju određeni stepen slobode u izboru reči, njihovom rasporedu i organizaciji interpunkcijskih znakova kojima se prenosi značenje osnovnog teksta. Ova sloboda je najšira kod književnih dela, dok je kod prevoda stručnih tekstova sloboda autora često sužena. Originalnost prevoda stručnih tekstova zavisi i od razvijenosti terminologije domaćeg jezika za pojmove konkretne oblasti u pitanju. Onda kada prevodioci nemaju mogućnost izbora između različitih reči kojima se može označiti neki termin, originalnost prevoda ceni se u odnosu na onaj deo teksta gde je autor imao takvu slobodu.

Šta se dešava ukoliko dva prevodioca izrade gotovo identične prevode, nezavisno jedan od drugog? Da li u tom slučaju postoji povreda autorskog prava prevodioca koji je prvi sačinio tekst?

Ne. Originalnost u autorskom pravu ne znači novost. Teoretski je moguće je da dva autora, nezavisno jedan od drugog, izrade identično autorsko delo. Ovakva mogućnost posebno je izražena kod prevoda i sličnih autorskih dela koja nastaju u pokušaju da se što vernije prikaže postojeće delo, ili u slučaju fotografije – lik, predmet ili predeo. Ocena da li u konkretnom slučaju postoji svesno podražavanje ranijeg postojećeg dela ili nenamerno stvaranje identičnog ili bitno sličnog originalnog dela ceni se uzimajući u obzir sve okolnosti konkretnog slučaja. Često je na autorima teret dokazivanja okolnosti koje potvrđuju originalnost u njihovom stvaralaštvu, i obrnuto – dozvoljeno je dokazivati sve činjenice koje ukazuju da je autor svesno podražavao tuđe postojeće delo.

Da li se elektronskim programima za proveru plagiranja može utvrditi povreda autorskog prava?

Ne. Programi za elektronsku proveru podražavanja ranije pohranjenih tekstova u dostupnim bazama ne cene postojanje povrede autorskog prava, već količinu teksta koji se preklapa sa postojećim radovima. Čak i kada postoji visoki procenat preklapanja sa ranije objavljenim tekstom, postojanje povrede autorskog prava zavisiće i od drugih faktora: prirode ranijeg dela u odnosu na koje postoji podražavanje, postojanja i obima njegove autorskopravne zaštite, i brojnih drugih faktora. U tom smislu, da bi se utvrdila povreda autorskog prava, neophodno je da se u svakom konkretnom slučaju utvrdi koji procenat teksta se preklapa, koji su to delovi teksta, kao i da li ti delovi, sami po sebi, uživaju autorskopravnu zaštitu.

Da li postoji određeni procenat tuđeg teksta koji je dozvoljeno preuzeti?

Ne, zakon ne određuje procenat tuđeg dela koji je moguće slobodno koristiti, bez obzira na saglasnost autora. Čak i kada se deo ranijeg teksta citira, potrebno je da se steknu uslovi propisani zakonom – naime, da je delo objavljeno, da je reč o kratkom odlomku ranijeg dela, da se naznači ime njegovog autora, naslov i slično.

Da li je neophodno deponovati prevod kako bi uživao autorskopravnu zaštitu?

Ne. Deponovanje autorskih dela preporučljivo je zbog toga što olakšava dokazivanje autorstva i vremena nastanka dela za slučaj mogućih sporova u budućnosti. Ipak, kada je reč o autorskopravnoj zaštiti prevoda, ona nastaje samim nastankom dela, što važi i za sve druge vrste autorskih dela.

Ko određuje da li prevod uživa autorskopravnu zaštitu i da li postoji povreda prava?

Za ovo pitanje isključivo je nadležan sud. Kada je reč o prevodima stručnih tekstova, često se angažuju i stručni veštaci koji poznaju terminologiju materije koja je predmet obrade, te koji mogu dati ocenu slobode kojom je autor raspolagao i njegovog ličnog doprinosa u celokupnom izgledu dela.

Kako domaća praksa još uvek nije iznedrila tumačenje pojma originalnosti u kontekstu prevoda kao autorskih dela, originalnost prevodilaca ceni se kao i originalnost svih drugih autora – prema postojanju ličnog intelektualnog doprinosa stvaraoca dela. 

Autor teksta: Mina Jovanović, advokat

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Kc socks – failure or a smart business decision?

Written by: Milica Stanojevic and Nikola Kliska

During the past few years we have noticed an unusual situation on the Serbian market or, more precisely, a phenomenon known as “Kc socks”.

The increasing popularity of these socks among Serbian consumers incited us to inform the trademark holder about it. Once the Calvin Klein Trademark Trust (CKTT) was notified, they became very interested in inestigating the situation more closely.

Continue reading “Kc socks – failure or a smart business decision?”

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