PR Legal team, led by its partner Milan Petrović, won a lawsuit for infringement of the renowned trademark “C KAFA“. In this lawsuit, PR Legal represented licence holder – company Strauss Adriatic, member of Strauss Group, one of the leading manufacturers and distributers of coffee in the country and abroad.

This important judgment was passed following a litigation that was run for several years against a local coffee manufacturer for imitation of “C KAFA“ trademark that is well known in Serbia and in neighbouring countries as a symbol of high reputation.

Beside establishing the trademark infringement, the judgment also prohibited performance of the illicit activity in future and sustained other requests in terms of destruction of confiscated goods at the cost of the defendant, publication of judgment in daily press and compensation of procedural costs.

Another legal curiosity is that the Commercial Court of Appeal also sustained a special request of the plaintiff for payment of licence compensation instead of damage compensation, which can be awarded in case of intended trademark infringement, and ordered to the defendant to pay the amount of cca EUR 45,000.

Namely, Article 73a of the previous Law on Trademarks (Official Gazette of RS no. 104/2009, 10/2013 and 44/2018 – other law) that applied in this particular case, stipulated that in case of intended trademark infringement or infringement by utmost negligence, a plaintiff may request from the defendant, instead of damage compensation, to pay the compensation up to the triple amount of usual licence compensation that would be paid in case of lawful use of rights. By such legal solution, a right holder was relieved of obligation to prove the damages endured, which was to alleviate his procedural position. However, in practice the courts rarely awarded such compensation, among other because it was difficult to prove the amount of usual licence fee.

This decision is also interesting because the currently valid Law on Trademarks (Official Gazette of RS no. 6/2020) does not stipulate the payment of licence compensation instead of damage compensation for trademark infringement, instead it stipulates that upon the establishment of damage compensation amount the court shall take in to account all circumstances of the case, in particular negative economic consequences endured by the plaintiff, including lost profit and profit that the defendant earned by trademark infringement. What is more, the court may decide that the plaintiff receives damage compensation that may not be lower than the fee he would receive for the particular way of using the protected mark, given that such use was lawful. On the other hand, if rights were not infringed intentionally or by utmost negligence, the court may decide that the plaintiff receives the compensation in the amount of profit that the defendant earned by right infringement.

It is important to note that significance of the judgment concerned is not exhausted by regulation of the dispute between the parties in lawsuit, considering that the position of the Commercial Court of Appeal is a good sign for the protection of intellectual property right in the Republic of Serbia in general and an encouragement for all right holders.