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IP:CON Belgrade 2023 / Београдска конференција о праву интелектуалне својине

Правни факултет Универзитета у Београду и Живко Мијатовић и партнери, организују конференцију о праву интелектуалне својине 6. априла 2023. године са почетком у 9.30 часова, у јединственом амбијенту атријума Југословенске кинотеке у Београду.

Сусрет ће окупити све који желе да чују и учествују у дијалогу о актуелним темама из области правне заштите интелектуалних добара – професоре права, адвокате, судије и представнике носилаца права интелектуалне својине.

Догађај ће садржати четири панела:

  • Поступци због повреде права интелектуалне својине – осврт на проблеме из праксе;
  • Нови Закон о жиговима – искуства у примени три године касније;
  • Права интелектуалне својине и дигитална имовина;
  • Права интелектуалне својине и индустрија видео-игара.

Посетиоци конференције имаће прилику да чују панелисте са различитим искуствима у изложеним областима, као и да активно учествују у дискусији.

Специфичности процесних правила судске заштите, накнада штете због повреде права, референцијална употреба жига, незаменљиви токени и ауторско право, разноликост интелектуалних добара у видео играма, само су неке од тема о којима ће се говорити са циљем да се утврди практични домашај појединих правних решења.

Догађај је организован у намери да промовише значај заштите интелектуалне својине и размену знања и идеја о изазовима које доноси њен савремени развој.  

Агенда конференције ће ускоро бити доступна.


Радни језик: српски

Пријава за учешће је обавезна најкасније до 30. марта путем линка

Број места је ограничен.

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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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ZMP Top Ranked Across Nine Jurisdictions In The WTR 1000 2023 Edition

The World Trademark Review (WTR) announced the WTR 1000 – The World’s Leading Trademark Professionals for the year 2023, recognizing the world’s top trademark leading firms and individuals.

ZMP continues to garner recognition, this time being included for 9 jurisdictions and 8 individuals.

ZMP teams in Bulgaria, Croatia, Czech Republic, Poland, Romania, Slovakia, Serbia, Slovenia and Spain have yet again been praised for their stand-out trademark work.

Eight ZMP practitioners are recognised by WTR for their exceptional expertise – Dolores Canadas Arcas, Ivana Knezevic, Metka Malis Furlan, Vladimir Marenovic, Djura Mijatovic, Monica Novac, Tomasz Rychlicki, and Tsvetomira Vasileva.

Congratulations to our colleagues Djura Mijatovic, Ivana Knezevic, Vladimir Marenovic, and Monica Novac who are now upgraded as individuals in band Gold.

ZMP would like to thank our clients for their positive feedback and their continued trust and support.

A big congratulations to all of the teams!

If you wish to read the full ZMP profile please visit the WTR website here.

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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.


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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ZMP at ECTA Annual Conference – “Designing the Future”

Our Senior Associate Vladimir Marenovic attended the ECTA 40th Annual Conference “Designing the Future” in Copenhagen.

This year’s conference brought together professionals in the field of designs, trademarks, and related IP matters to discuss hot topics and developments of IP trends – NFTs, metaverse, IP strategy for start-ups, and much more.

We wish to congratulate ECTA for hosting such an exceptional event.

About ECTA (European Communities Trademark Association):

With more than 1500 members, coming from all Member States of the EU and beyond, ECTA promotes the knowledge and professionalism of the intellectual property law community in the fields of trade marks, designs, copyright and other intellectual property rights, within the European Union.

ECTA provides an ideal forum for knowledge exchange and sharing, and is an accredited professional association in many countries for IP attorneys. The association brings together lawyers, from private practices or the industry, judges, academics and various other IP-related professionals, who wish to maintain and expand their knowledge in the fields of intellectual property.

Also, ECTA is following and actively contributing to many ongoing legislative and implementation processes, including the EU copyright law reform, the reform of the design law, evaluation of domain names practices and much more.

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