PETOŠEVIĆ Successfully Represents Client in Serbian Lookalike Case

PETOŠEVIĆ represented Marbo Product doo, a well-known Serbian snack and processed foods producer and subsidiary of PepsiCo, Inc., in a lookalike case against Serbian processed foods company Moravka Pro doo.

Namely, Marbo has in its assortment a potato product under the name “Minut Mashed Potatoes”, present in the market for over 10 years. In 2003, the company registered the product packaging before the Serbian IPO, protecting its combination of colors – red, yellow and green, as well as its figurative elements – the name written in a banner and a wooden bowl and spoon filled with mashed potatoes.

In 2014, Moravka started to sell the same product in the same package shape, featuring the same elements and layout with differences in nondistinctive or less distinctive elements. Moravka’s packaging featured the three colors identical to Marbo’s, applied on the same figurative elements, a similar banner with the product name written in it and a wooden spoon with mashed potato, clearly resembling the “Minut Mashed Potatoes” packaging.

On February 12, 2015, the Commercial Court in Belgrade ruled in favor of our client stating that there was a high degree of visual similarity and thus a likelihood of confusion among relevant consumers, including likelihood of association with Marbo’s trademark and the product origin. The judge further said that the packagings were used for the same products and had the same graphic elements and layout, meaning that the design of the “Minut Mashed Potatoes” package was copied.

This case brought up an interesting issue of whether it was necessary to have an independent expert provide evidence on the similarity of the packages. Various courts in Serbia have previously had contradicting standpoints on whether similarity was a legal or factual issue and who was to decide about it. In recent cases, the prevailing standpoint of the judges was that this was a legal issue to be decided by a judge and that an independent expert’s opinion was not necessary. Thus, the judge refused to employ an independent expert in our case.

The defendant appealed the decision for both procedural and material reasons, but the Commercial Appellate Court refused the appeal and confirmed the first instance decision on May 12, 2016.

The proceedings, from filing the action until the final decision, lasted for two years, which is considered efficient in comparison with the previous cases. This is thanks to the changes introduced in the Serbian IP judicial system in recent years, such as delegating competence to only one first instance court to decide on IP matters, in order to increase the speed and efficiency of proceedings and improve IP rights protection in general.

By: Ana Stojanović

For more information, please contact Ana Stojanović at our Serbia office.