03-12-2013 (Newsletter Issue 3/13)
Trademark Law Amended
The amendments to the Serbian trademark law were published in the Official Gazette No. 10/2013 on January 30, 2013 and came into force on February 7, 2013.
The most significant novelty is that parallel import is no longer allowed in Serbia. Namely, the previous law prescribed that trademark holders cannot oppose the use of their trademarks in connection with goods marked with such trademarks and placed into commerce anywhere in the world by the trademark holder or other person authorized by the holder. Under the amended law, the previous system of international exhaustion of rights has been substituted with a system of national exhaustion of rights, whereas now the holders cannot oppose the use of their marks with respect to goods bearing such marks and placed on the Serbian market by the holder or other person authorized by the holder. In addition, trademark holders cannot oppose the goods in transit.
Most amendments primarily aim to eliminate certain terminology shortcomings and thus ensure more accurate interpretation and effective implementation of the Law on Trademarks.
In addition, the amendments aim to harmonize Serbian regulations with the corresponding EU legislation, namely the European Directive 2004/48/EC of the Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and the Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks.
The newly amended Article 4 further refines the definition of a trademark in a way that it specifically includes two conditions that must be fulfilled simultaneously. Namely, the sign must be capable of being represented graphically and of distinguishing the goods or services in trade; therefore Article 4 has been completely harmonized with the Article 2 of the Directive 2008/95/EC.
The compliance with the above article has also been included as an additional ground for refusal within Article 5 of the trademark law.
The wording of the provisions prescribing which marks are excluded from protection has been changed to correspond to the provisions of the Directive 2008/95/EC.
According to the amended law, foreign residents no longer have to be represented before the PTO by attorneys at law or patent and trademark representatives. This obligation still stands for the non-resident foreign individuals and entities.
The previous law explicitly prescribed that an exclusive licensee is entitled to sue for the infringement. Now, this right has been granted to all licensees (exclusive and non-exclusive), unless otherwise prescribed by the license agreement.
Lastly, the right of information has been explicitly extended to the persons other than infringers in accordance to the corresponding provisions of the Directive 2004/48/EC.
07-04-2011 (Newsletter Issue 9/11)
Deadline for Re-Registration Approaching
The new trademark law that entered into force in Montenegro on December 16th, 2010, obligates the owners of trademarks registered before the Serbian Intellectual Property Office to request entrance of their rights into the Montenegrin trademarks register by December 16th, 2011.
The obligatory re-registration affects national trademarks registered before the Serbian IPO prior to May 28th, 2008, the opening date of the Montenegrin IPO, unless a renewal or request for recordal of changes or Certificate of Registration had already been filed in Montenegro before December 16th, 2010. The deadline is not extendable. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
Source: Petosevic, Montenegro
10-01-2010 (Newsletter Issue 15/10)
Accession to the Nice Agreement
The Republic of Serbia joined the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks on September 17th, 2010.
The said Agreement will enter into force, will enter into force, with respect to the Republic of Serbia, on December 17th, 2010.
12-24-2009 (Newsletter Issue 6/10)
New Trademark Law in Force
A new trademark Law came into force in Serbia on December 24th, 2009.
The main innovation of the new Law is the introduction of an Appeal stage in the trademark registration procedure. Namely, according to the previous TM Law, the IPO decisions were final and the only option against decisions of the IPO was to initiate an Administrative Court Procedure before Serbian Supreme Court.
It is now possible to file an Appeal before the Government within 15 days as from the date of receipt of the first instance decision. The Ministry of Science and Technological development will probably decide in the second instance.
The Serbian Supreme Court still remains the last instance in the IP matters since the Appellants can initiate the Administrative Court Procedure against the second instance decision within 30 days as from the date of receipt.
Source: Petosevic, Belgrade, Serbia
Legal basis is the new Trademark Law in force since December 24th, 2009 with the amendments in force as of February 7, 2013.
Serbia is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Trade marks which were protected in former Yugoslavia are also protected in Serbia.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs as well as musical notes, hologram marks and other marks that are graphically representable.
The following trademark types are registrable: trade marks, service marks, collective marks and certification trademarks.
The application is filed at the Intellectual Property Office of the Republic of Serbia.
Multiple-class applications are possible.
Foreign applicants who have no seat or residence in the Republic of Serbia need a local agent.
A non-legalized power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 3 to 6 months.
In special cases, designated by law, an urgent registration is possible.
After registration, the trademark is published in the two-monthly “Glasnik intelektualne svojine”.
There are no provisions for filing opposition against a pending trademark application. However, it is possible, to file an observation claim against the pending trademark basing such claim on prior mark which the observant considers similar to the one being examined. This motion only serves to draw the Examiner's attention on the existence of prior similar mark. The Examiner is not obliged to issue any Decision regarding such claim, neither is he obliged to accept the arguments stated therein.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
Opposition system not adopted. However, it is possible to file an observation claim. The IPO is not obliged to take into consideration third party observations.
A trademark registration is valid for 10 years from date of application. It is renewable for periods of 10 years.
If the trademark has not been used within 5 years from registration or has later not been used for 5 consecutive years, it may be subject to cancellation.
The official fee is approx. EUR 120.00 for up to three classes without figurative element and approx. EUR 140.00 for up to three classes (with figurative element). Each additional class (after third) is EUR 23.00. The prices may of course vary due to currency changes.
Trademark Licence Agreement
In Serbia a trademark licence agreement has to be in writing. Licensing of unregistered marks is permitted, but only licences of registered and pending trademark applications can be recorded with the Serbian IP Office. A trademark can be licensed for all or for some of the goods or services covered and for all or part of the territory of Serbia. Licences may be exclusive or non-exclusive. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of a trademark licence agreement.
There are provisions in law for the recordal of a licence. Although the current trademark law does not explicitly provide that recordation of licence agreements is mandatory, the licence becomes effective and enforceable
against third parties only upon registration of the licence agreement.
There is no time frame for a recordal and there is no standard form for a licence agreement but it must contain:
1. The date of the signature
2. The names and surnames (or company title), addresses or places of business of the contractual parties
3. The trademark registration numbers and/or the numbers of the trademark applications
4. The term of the licence
5. The scope of the licence i.e. an explicit indication whether the licence is exclusive or non-exclusive
The following documents are required for a recordal:
1. The original licence agreement or a copy thereof certified by apostille, or
2. An original, notarized excerpt from the licence agreement or the Apostiled copy thereof, or
3. A statement on license signed by the contracting parties or the Apostilled copy thereof
If any of the above documents is in foreign language, it would be necessary to submit the corresponding certified translation as well.
A licence agreement becomes effective and enforceable against third parties on the registration date of the licence agreement in the appropriate National Trademark Register of the IP Office. The Serbian IPO ex-officio publishes the content of the licence in the Intellectual Property Gazette. The Intellectual Property Gazette is published on the last day of every second month.
Use of a trademark by a licensee would be considered as genuine use of the mark within provisions concerning revocation of a trademark registration based on non-use.
The licensee is entitled to initiate infringement proceedings unless otherwise prescribed within the license agreement. The licensee is not required to cite the trademark owner as co-plaintiff in any such proceedings.
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We would like to thank the following law firms for their assistance in updating the information provided:
PETOŠEVIĆ, Belgrade, Serbia
PETOŠEVIĆ, Belgrade, Serbia
02-03-2011Zivko Mijatovic & Partners
, Belgrade, Serbia Licensing
PETOŠEVIĆ, Belgrade, Serbia
PETOŠEVIĆ, Belgrade, Serbia