The Challenges of IP Protection in the Balkans

By Zivka Kostovska, director of PETOŠEVIĆ Macedonia. Published in Emerging Macedonia (Summer 2010), 2010.

Providing clients with professional and prompt intellectual property (IP) service in the Balkans can be difficult and challenging, as we at PETOŠEVIĆ, an IP law firm with 14 offices worldwide – 10 located in the Balkans – have learned over the years. Most of the countries where we provide services are in transition. Namely, Albania, Bosnia, Croatia, Macedonia, Kosovo, Montenegro, Slovenia, Serbia, Romania and Bulgaria have all succeeded in improving their IP protection over the years. These improvements are primarily motivated by the idea of joining the European Union. That said, the level of success in improving IP protection varies from country to country.

For example, even though the Macedonian IP Office is one of the most contemporary institutions in the country, there often are delays in protecting clients’ IP rights. The Macedonian IPO has been experiencing personnel shortage for the past decade and even simple administrative procedures, like trademark renewals or data recordals, can take two to three years. In Serbia and Croatia these procedures can be completed in just a couple of months, while in Bosnia and Herzegovina in up to six months.

When it comes to the courts, the delays are even more significant. Straightforward procedures like cases concerning Customs detention of suspected counterfeit goods and administrative lawsuits against decisions of the IP Office can last more than one year, in some cases even up to three years, despite the fact that Macedonian laws specifically address the urgency of the procedure in enforcing IP. We are successfully overcoming this obstacle by requesting interim injunctions on behalf of our clients. By doing so, the infringement is stopped immediately, and as long as the case is not decided on, the injunction is in force. Another obstacle — and this is generally true for the entire region – are the judges who try IP cases, as they have very low comprehension of IP laws, and the expert-witnesses, who have little or no understanding of the matter at hand. To overcome this obstacle, we spare no effort or paper to make the issues more understandable to the judges. In fact, we have welcomed the opportunity to educate judges who try IP cases in more rural places in Serbia. Many judges in rural places have never handled IP issues and those who are open to learning have had PETOŠEVIĆ lawyers explain the law and the practice.

Court representation is a major problem in countries like Macedonia, Bosnia and Croatia. Current legislations and practices in these countries do not allow PETOŠEVIĆ employed lawyers to represent clients before the courts. Representation before the courts, according to the laws in these 3 countries, must be performed by an independent attorney at law, one who has his or her own solo practice. He or she cannot be employed by a firm. This creates a situation where a firm like PETOŠEVIĆ needs to enter into agreements with solo practitioners who will act as of-counsel on behalf of the firm. This is a disadvantage for clients because the counsel that is most familiar with the subject case is forced to entrust the case to an of-counsel litigator to do the trial. This delays the case, as the of-counsel needs time to get to the essence of the matter. There were instances where trials were postponed just for confirmation of a simple fact that usually would be common to the lawyer who has been working on the case from the beginning. In other countries in the region that have more extensive IP practice, like Serbia, Slovenia, and Bulgaria, an attorney employed by a commercial company like PETOŠEVIĆ can represent clients before the courts just by presenting a valid Power of Attorney and evidence that they have passed the bar exam.

In light of the above, countries like Macedonia still have plenty of work to do in order to improve the efficiency of their judicial system and the enforcement of IP rights. That said, we at PETOŠEVIĆ continue to find creative legal ways to protect our clients who do business in the region and to fight for development of the IP practice.

Zivka can be contacted at: zivka.kostovska@petosevic.com