02-01-2017 (Newsletter Issue 3/17)
IP Laws Amended
The amended laws on patents, trademarks and industrial designs entered into force in Montenegro on January 18, 2017. Most amendments relate to terminology alignment with the new Law on Administrative Proceedings, but there are two other significant changes.
All three laws introduce administrative disputes against the Montenegro IPO decisions. Under the former laws, the Montenegrin Ministry of Economy had competence to rule in the second instance and further appeals were brought before the Administrative Court.
The amended laws abolish this practice after 6 years of being in force. Now, appeals are to be brought directly before the Administrative Court.
The reason behind this change is the complexity of the registration process, particularly in terms of trademarks, where reaching a decision often requires expert knowledge of examination practices and thorough analysis.
Another novelty in the amended Law on Trademarks is the possibility for parties to suspend a trademark opposition proceeding while negotiating an agreement. The parties have to reach an agreement within 6 months.
Requesting a suspension was previously possible under the provisions of the Law on Administrative Proceedings. However, the amended Law on Trademarks now clearly defines the parties’ obligations in such situations. If the parties realize they will not reach an agreement within 6 months, they can request the continuation of the proceeding. If no agreement is reached within these 6 months and the negotiations continue, the parties have to compose minutes of their negotiations and communicate them to the IPO.
03-18-2015 (Newsletter Issue 4/15)National Industrial Design Register LaunchedIn December 2014, the Montenegrin IPO introduced the National Register of Industrial Designs, a new online database and search tool providing access to 115 registered designs.
The users can obtain information on registered designs by entering search criteria such as the application and registration number, the name of the design, the name of the owner and the Locarno classification numbers. The search leads to detailed information on registered designs in the Montenegrin language.
To enter the online database, please click here
Source: PETOSEVIV, Montenegro
04-01-2014 (Newsletter Issue 6/14)
Trademark Law Soon Amended
Montenegro has recently drafted amendments to its trademark law in order to harmonize it with the European Union trademark legislation. It is expected that the amendments will be soon adopted.
The amended law more precisely regulates the trademark registration process and trademark infringement court proceedings.
The provisions concerning well-known trademarks and trademarks with reputation have been aligned with the corresponding provisions of the Directive 2008/95/EZ.
The amended law clearly outlines the conditions, the authorized persons and the procedure related to the invalidation of trademarks and collective trademarks.
The provisions regulating the procedure for cancellation of a trademark due to non-use have been amended as well. The new law also permits cancelling trademarks that have become generic as well as trademarks that are likely to cause confusion with existing marks, in line with Directive 2008/95/EZ.
The amended law further strengthens civil protection in case of trademark infringement. To that end, the law includes additional provisions on the seizure and destruction of goods, compensation of damages, usual compensation, unjust enrichment, preliminary injunctions, securing evidence and the publication of court decision.
Finally, the amended law stipulates monetary fines in case of trademark infringement. The fine in the amount of EUR 1,500 – 20,000 (USD 2,100-28,000) may be imposed against a legal entity in case of the unauthorized use of a trademark. The amendments stipulate fines in the amount of EUR 500-2,000 (USD 700-2,800) for physical persons and the responsible person within a legal entity, and the fines in the amount of EUR 1,300-6,000 (USD 1,800-8,300) for entrepreneurs.
Source: Petosevic, Montenegro
12-04-2012 (Newsletter Issue 18/12)
Accession to Nice Agreement
On November 16, 2012, Montenegro deposited its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised in Stockholm on July 14, 1967, and in Geneva on May 13, 1977, and amended on September 28, 1979.
The Geneva Act of the Nice Agreement as amended will enter into force in Montenegro on February 16, 2013.
Source: Source: Petosevic, Montenegro and www.wipo.int
09-02-2012 (Newsletter Issue 13/12)Amendments to Trademark LawThe Law on amendments of the Trademark Law in Montenegro entered into force on August 17, 2012. Namely, the referenced Law on amendments of the Trademark Law in Montenegro was published in the Official Gazette of Montenegro No. 44/12 on August 9, 2012.
The Law on amendments clarifies the procedure for filing national and international trademark applications. Namely, after filing new trademark application, the IPO of Montenegro examines the formal requirements of the same. If the formal requirements are not fulfilled, the IPO of Montenegro invites the applicant to submit the missing documents. The deadline for submission of the necessary documents is 30 days as from the receipt of the invitation (this term is not extendable). In case the Applicant meets the deadline of 30 days and the missing documents are submitted, the filing date of the trademark application will be the date of fulfilling the formal requirements. In case the applicant does not fulfill requirements within the deadline of 30 days, the application will be rejected.
According to the provisions of the Trademark Law, the renewal fees paid in a grace period (six months after the renewal due date) had to be paid with fine 100%. However, according to the amendments of the Trademark Law, the renewal fees paid in the grace period have to be paid with fine of 50%.
The Trademark Law is amended with the provisions regulating the opposition against International Registrations. The deadline for filing the opposition (90 days) is to be counted as from the first day of the month following the month of publication of the WIPO Official Gazette in which the International Registration is published. In case the International Registration is preliminary refused based on filed opposition, the IPO of Montenegro will invite the applicant to name the representative. The deadline to name the representative is 4 months as from the receipt of the referenced official invitation. The deadline to respond to an opposition is 60 days as from the receipt of the opposition by the named representative.
Source: Zivko Mijatovic & Partners, Montenegro
02-07-2012 (Newsletter Issue 2/12)Accession to Vienna AgreementThe Government of Montenegro deposited its instrument of accession to the Vienna Agreement establishing an International Classification of the Figurative Elements of Marks on December 9, 2011.
The said Agreement will enter into force on March 9, 2012.
For more information, please click here.
01-23-2012 (Newsletter Issue 1/12)
TMs Published for Opposition
The Montenegro Intellectual Property Office (IPO) issued its seventh Official Gazette on December 20, 2011. It is the first one that includes national trademark applications published for opposition, under the provisions of the new trademark law of December 2010.
The new trademark law abolished the previous practice of substantive examination on relative grounds and introduced the opposition proceedings. A trademark application is now examined on absolute grounds only and if it meets the requirements for registration, it is published in the Official Gazette. Third parties have 90 days from the date of publication to file a written opposition.
Source: Petosevic, Montenegro and
Intellectual Property Office of Montenegro
12-01-2011 (Newsletter Issue 14/11)
Serbian Trademarks Included in Search Reports
The search reports provided by Intellectual Property Office of Montenegro (IPO) include Serbian trademarks registered before the IPO of Serbia prior to May 28, 2008. Therefore, no additional search needs to be conducted before the Serbian IPO.
However, the report includes Serbian trademarks that may not be re-registered or filed for re-registration in Montenegro. No further information is provided by the Montenegrin IPO as to the status of those marks in Montenegro. Therefore, whereas some of those marks may be real obstacles if they were filed for re-registration in Montenegro, others may not become such an obstacle if their owners do not file for re-registration in Montenegro before December 16, 2011. The situation will be clear by the end of re-registration period.
Source: PETOSEVIC, Podgorica, Montenegro
11-08-2011 (Newsletter Issue 13/11)
New Trademark Regulation Enters into Force
A new regulation governing trademark application and registration procedures came into force in Montenegro on October 29, 2011. The new regulation replaced the former 2004 regulation, rendered in the former State Union of Serbia and Montenegro.
The new regulation determines the content of and the manner of running the trademark register and applications records. The regulation also prescribes the necessary content for all types of requests and decisions that may be rendered in connection with a trademark application and registration.
Source: PETOSEVIC Montenegro
10-01-2011 (Newsletter Issue 11/11)
Deadline to Re-register National Serbian Trademark
We would like to remind you, that the final deadline for re-registration of national Serbian trademarks in Montenegro is December 16, 2011. In the event that a re-registration request is not filed, the national Serbian trademark registration will no longer enjoy protection in Montenegro.
This re-registration process applies to national Serbian trademarks only; International Registrations designating Serbia cannot be re-registered in Montenegro.
Source: Producta Ltd., Zagreb, Croatia
08-10-2011 (Newsletter Issue 10/11)Trademark Searches PossibleThe Intellectual Property Office of Montenegro (IPO) informed that the Trademark Database of Montenegro became available for conducting trademark searches. It is possible to file requests before the IPO of Montenegro for conducting the official searches through national Trademark database.
At this moment, the Trademark Database of Montenegro covers only those trademarks registered or applied for before the IPO of Montenegro. As the process of revalidation of Serbian trademark registrations in Montenegro has not yet been finished, the trademark searches do not cover the Serbian trademark registrations yet. Once the revalidation process is finished (deadline is December 16th, 2011), Montenegrian Trademark Database will be completed. Until then, it is recommended to conduct simultaneous searches in both Montenegro and Serbia to guarantee completeness of the results.
Source: Zivko Mijatovic, Montenegro
01-01-2011 (Newsletter Issue 1/11)
Procedure for Validation of Serbian Trademarks
The new Trademark Law in Montenegro entered into force on December 16th, 2010. According to the provisions of the new Trademark Law, national Trademarks registered before the IPO of Serbia prior to May 28, 2008 (date of opening of the Montenegrin IPO) have to be validated before the IPO of Montenegro.
It will be necessary to provide proof of registration of Serbian National Trademarks and to file a claim for entry into the Trademark register of Montenegro.
Please find below details of the procedure for entrance of Serbian Trademark Registrations into the Trademark Register of Montenegro:
- Obtaining of the Serbian Validity Certificate and forwarding of the same to Montenegro
- Submission of the Serbian Validity Certificate, filing a claim for entry into the Trademark Register of Montenegro and payment of fees for publication in the Intellectual Property Gazette of Montenegro
- Publication of the Trademark in the Intellectual Property Gazette of Montenegro and issuance of the Decision on entrance into the Trademark register of Montenegro
All the rights of the Serbian national trademarks which comply with the above requirement will preserve the same priority and renewal date as in Serbia.
The deadline for complying with the above mentioned procedure is 1 year from the date of entering into force of the new Law – December 16th, 2011. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
The above requirement is not deemed necessary for any Montenegro mark based on a Serbian national trademark for which an action has already been taken directly before the Montenegro IPO prior to December 16th, 2010 (such as renewal, assignment, change of name, etc.).
12-01-2010 (Newsletter Issue 17/10)
New Trademark Law/New Opposition Period
The Parliament of Montenegro has passed a new Trademark Law on November 30th, 2010. The law will enter into force on December 16th.
The main novelties which have been introduced in the new Law:
- proof of registration for Serbian national trademarks now required
- no examination on relative grounds during application procedure
- introduction of opposition procedure (opposition period is 3 months from publication of application)
The proof of registration of Serbian National Trademarks is now required for trademarks in Montenegro based on a Serbian national trademark unless an action has already been taken for the respective trademark before the Montenegro IPO (such as renewal, assignment, change of name, etc.).
The deadline for complying with this procedure will be 1 year from publication of the new Law in the Official Gazette of Montenegro. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
As from the enactment of the new Law, the Office will examine only absolute grounds for refusal, while the relative grounds will become subject to opposition proceedings. Any trademark application in Montenegro (excluding trademarks registered in Serbia and Montenegro prior to 28 May 2008) will be published and there will be a period of 3 months as from the publication date, during which time an opposition may be filed. This term is not extendible.
Deadline Extended for Montenegro Domain .ME
The period of transition from the current CG.YU domain to the new .ME domain has been extended from September 30, 2009 to March 30, 2010, based on the decision of the International Corporation for Assigned Names and Numbers (ICANN). If current CG.YU domain users do not switch to .ME before the deadline, they will not be able to access their emails and web servers.
03-08-2010 (Newsletter Issue 8/10)Launch of IP GazetteThe Montenegrin IPO launched its first IP Gazette on 10 February 2010.
The Gazette is available on the Montenegrin IPO website click here
It will be issued three times a year.
Montenegrin Trademark Law entered into force on December 16, 2010. However, as from its enactment, Trademark Law has undergone significant changes, through Law on Amendments of the Trademark Law which entered into force on August 9, 2012, then, through amendments from April 19, 2014, amendments from June 30, 2016 and the latest Law on Amendments of the Trademark Law, which entered into force on January 10, 2017 (but provisions will be applicable as from enactment of the Law on Administrative Procedure, predicted for July 1, 2017). Law on Amendments from 2012 regulates international trademarks and their transformation into national registrations, filing the opposition and deadline for filing the opposition against international trademarks, registration of international trademarks, vulnerability for non-use, etc. Recent Law on Amendments is enacted in order to harmonize Montenegrin Trademark Law with the EU legislation. Provisions of the Montenegrin Trademark Law trough the Law on Amendments are aligned with the Directive 2008/95/EZ. Law on Amendments from 2014 improves the status of well-known and trademarks with reputation in Montenegro, and also, introduces possibility of cancelling trademarks that became generic and do not have necessary distinctiveness anymore. The Law on Amendments from 2014 prescribes withdrawal from the market, seizure and destruction of the goods that infringe somebody's intellectual property rights. Consequently, Trademark Holder is entitled to claim for damages, while monetary fines for trademark infringement are explicitly prescribed. The most important provisions of the Law on amendments from 2016 were of terminological character, which was helpful for more precise interpretation of the Trademark Law. Also, Law on amendments from 2016 introduced possibility for Licensee to file the opposition claim (of course, with prior approval of the trademark holder), as well as for the holder of the personal name, portrait, copyright or other industrial property rights. Finally, the most recent amendments of the Trademark Law from 2017 will change the current way of filing appeals – namely, up to now, appeals were filed before the Ministry of Economy, as the second instance, while as from the moment of enactment of the Law on Administrative Procedure, all appeals will have to be filed before the Administrative Court.
Montenegro is a member of the Madrid Agreement and the Madrid Protocol.
Nice classification, 11th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, slogans, letters, numbers, images, drawings, colors, combinations of colors, three-dimensional shapes, combinations of such marks, as well as musical phrases represented by musical notes.
The following trademark types are registrable: trademarks, service marks, collective marks
The application is filed at the Montenegrin IP Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A simply signed power of attorney is sufficient – no legalization/notarization is required.
The application process includes a formal examination as well as an examination on absolute grounds of refusal.
If the formal requirements are not fulfilled (outlook of the mark, list of goods/services, complete information about the applicant and/or application form is missing), the IPO of Montenegro invites the applicant to submit the missing documents. The deadline for submission the necessary documents is 30 days as from the receipt of the invitation (this term is not extendable). In case the Applicant meets the deadline of 30 days and the missing documents are submitted, the filing date of the trademark application will be the date of fulfilling the formal requirements. In case the applicant does not fulfill requirements within the deadline of 30 days, the application will be rejected. In case the POA or payment receipt is missing, then the local office issued the official action and invites the Applicant to submit the necessary evidence within 60 days.
After filing a new Trademark Application, it enters into the Examination procedure in which absolute grounds of refusal are examined, while relative grounds are subject to opposition proceedings. Trademark applications in Montenegro are published for opposition purposes. In case opposition was not filed during the opposition period, or was rejected after filing, the IPO invites the Applicant to proceed with payment of registration fees, protection fees for 10 years period and publication fees.
It is possible to file an opposition within 90 days following the publication of Trademark Application in the Intellectual Property Gazette of Montenegro. This term is not extendible.
Details regarding the Opposition Period against designation of IR Mark
are available in our publication on this topic here
The trademark is valid for 10 years from the application date (respectively the date of the fulfilled formal requirements). There is a possibility to pay renewal fees for further 10 years (and this action can be repeated unlimited number of times).
The grace period for renewals is 6 months from the expiration date of the trademark.
Further practical details are available in our publication on this topic here
According to the Trademark Law the trademark holder is obliged to use his mark (Article 17 of the Trademark Law: “If in a period of five years counting from the date of registration of a trademark, Trademark holder does not begin to use the trademark for goods or services for which it is registered, or if he stopped using for a continuous period of five years, the trademark shall cease to have effect, unless there are justifiable reasons for non-use.”).
In case the trademark is not being used on respective market, the same becomes vulnerable for cancellation action based on non-use. The grace period for use is five years as from the registration date or from the date of last use.
The competent authority will not issue a decision on cancellation of a trademark due to its non-use, if the use of the trademark had begun or was continued after the expiry of the five-year period of non-use of the registered trademark and before submission of a request for a cancellation of trademark due to its non-use except if the commencement of continuation of use of the registered trademark occurred after the holder of the fight had become aware that a request for the cancellation of his trademark will be submitted and if the use had begun or was continued within a period of three months before the submission of a request for the cancellation of a trademark.
Further practical details are available in our publication on this topic here
The official fee for trademark application is EUR 60.00 for up to 3 classes and another EUR 8.00 for each additional class or device mark. Registration fee is EUR 86.00 for up to 3 classes and EUR 13.00 for each additional class or device mark. Publication fees are EUR 10.00 for publication of application and EUR 10.00 for publication of registration, while fee for issuance of the Decision on Grant is EUR 50.00. Renewal fees are EUR 86.00 for up to 3 classes and EUR 13.00 for each additional class or device mark.
(Source for exchange-rates: bankenverband.de
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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here
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02-02-2017Zivko Mijatovic & Partners
, Podgorica, Montenegro
05-10-2016Zivko Mijatovic & Partners
, Podgorica, Montenegro
12-02-2014Zivko Mijatovic & Partners
, Podgorica, Montenegro
11-06-2013MSA IP - Milojevic, Sekulic & Associates
, n/a, Montenegro
09-03-2012Zivko Mijatovic & Partners
, Podgorica, Montenegro
PETOŠEVIC, Podgorica, MontenegroZivko Mijatovic & Partners
, Podgorica, Montenegro