Acting for the plaintiff, our office in Sarajevo, led by attorney Kerim Karabdic, obtained a favorable judgment from the Cantonal Court in Sarajevo in a trademark dispute. This was a second-instance decision, confirming an earlier decision of the Municipal Court in Sarajevo.
In the court proceedings, the plaintiff had alleged an infringement of its trademark by the defendant – a leading regional distribution company. The infringement was related to the organization and advertising of a festival by the defendant and involved unauthorized use of the plaintiff’s trademark.
In its decision, the court established that the respondent had indeed violated the plaintiff’s intellectual property concerning the organization and advertising of a festival. Accordingly, the court prohibited the respondent from unlawfully using the plaintiff’s trademark and ordered the respondent to remove the contentious mark from all its retail stores and websites within 30 days.
During the proceedings, the court had examined an expert witness, who had noted that both trademarks (the plaintiff’s and the respondent’s) are almost identical and that, in his opinion, the respondent’s trademark was an imitation of the plaintiff’s.
In its reasons of the decision, the Municipal Court had invoked the judgment of the European Court of Justice (ECJ) in the case SABEL BV v. Puma AG, in particular concerning the interpretation of the identity and similarity of trademarks. The first-instance court had also relied on the ECJ decision in the case Canon Kabushiki Kaisha vs Metro-Goldwyn-Mayer Inc. in which the ECJ established that “a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between these goods or services”. The case at hand concerned the same products /services with similar trademarks.
The finding of the court was that in this case the plaintiff’s trademark was infringed since the mark used by the respondent imitates the shape, design and combination of colors used by the plaintiff. The court established that the defendant had infringed the plaintiff’s trademark since a consumer of the goods, without paying special attention, would not be able to find a difference between the protected and unprotected trademark.
In accordance with the Trademark Act of Bosnia and Herzegovina, our office in Sarajevo is also representing the plaintiff in damages proceedings.