Serbian court delivers important decision on fake car parts
On July 19, 2021, the Belgrade Commercial Court issued a first instance decision declaring that the import and sale of auto parts visually identical to those protected by industrial design registrations valid in Serbia constituted infringement of industrial designs. This is the first such decision in Serbian practice, and therefore important as it is likely to influence future decisions on counterfeit auto parts.
PETOÅ EVIÄ Serbia represented the rights holders, the French car manufacturer Renault and its Romanian subsidiary Dacia, in legal proceedings against a Serbian company which distributed replacement headlights, side mirrors and grilles for the Dacia Sandero car without the consent of the complainants. The auto parts were visually identical to the original ones protected by Renault designs and bore the Dacia markings.
First of all, an attempt was made to settle the matter out of court. A cease and desist letter was sent to the Serbian company, which refused to comply with the complainant’s requests. A request for obtaining evidence was then filed with the Belgrade Commercial Court. The court granted the request, but the defendant refused to allow the representatives of PETOÅ EVIÄ Serbia and the officials of the commercial court to enter their premises. Finally, a legal action was filed with the Commercial Court on November 15, 2017.
During the proceedings, which lasted almost four years, two court-appointed expert intellectual property witnesses prepared expert opinions confirming both design and trademark infringement. A court-appointed financial expert determined the damage caused by the offense on the basis of the number of counterfeit auto parts sold by the Serbian company between 2014 and 2020 (200 headlights, 30 side mirrors and 71 grilles). Finally, the commercial court ruled in favor of the plaintiffs and, for the first time in Serbian practice, declared that the import and sale of spare auto parts visually identical to those protected by industrial design registrations constituted infringement. industrial design. The fact that the court also awarded damages in this case is important as it is very rare in Serbian practice for a court to award damages caused by an intellectual property violation, in particular a design violation. The decision of the commercial court is subject to appeal, but it seems unlikely that the decision will be overturned.
This decision is important because it will allow rights holders to invoke it in their fight against this type of counterfeiting, potentially starting to put an end to fake auto parts. So far there has been no such ruling in Serbian practice and European practice on counterfeit auto parts is itself inconclusive.