眾律國際法律事務所

Trademark system of Republic of Serbia

Introduction:

Language: Serbian

Capital: Belgrade

Area: including Kosovo 88,361 km2

Population: 7,041,599 (2016)

Currency: Serbian dinar (RSD)

Religion: Orthodox Christian (84%), Roman Catholic, Muslim

Geographical Situation: situated at the crossroads of Central and Southeast Europe, Serbia is landlocked and borders Hungary to the north; Romania and Bulgaria to the east; Macedonia to the south; and Croatia, Bosnia and Herzegovina, and Montenegro to the southwest; it also claims a border with Albania through the disputed territory of Kosovo.

International treaty membership:

Singapore Treaty on the Law of Trademarks (November 19, 2010)

Patent Law Treaty (August 20, 2010)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (October 15, 2009)

WIPO Copyright Treaty (June 13, 2003)

Trademark Law Treaty (September 15, 1998)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (February 17, 1998)

Convention Establishing the World Intellectual Property Organization (April 27, 1992)

Madrid Agreement Concerning the International Registration of Marks (April 27, 1992)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (April 27, 1992)

Paris Convention for the Protection of Industrial Property (April 27, 1992)

Legislation:

Law on Trademarks (2009)

Government Institutions:

Intellectual Property Office of the Republic of Serbia

Type of trademark:

Words, slogans, letters, numerals, pictures, drawings, color arrangements, three-dimensional forms, a combination of such marks, as well as of musical phrases presented by musical notation

Also individual trade mark, collective, guarantee trade mark,

Ground for refusal:

There are two kind of ground for refusal, the absolute one and the relative one.

Absolute grounds for refusal relate to the ineligibility of a mark for trade mark registration. The registration of a mark will be rejected if this mark:

-  is contrary to public policy or to accepted principles of morality;

-  has a general appearance that does not enable goods and/or services to be distinguished in the course of trade;

-  represents a shape determined exclusively by the nature of the product or a shape indispensable to obtain a given technical result;

-  designates exclusively the type, purpose, time or method of production, quality, price, quantity, weight or geographical origin of the goods and/or services;

-  is customary for designating a given type of goods and/or service;

-  is likely to cause confusion in trade due to its representation or content, and to mislead the relevant public with regard to the geographical origin, type, quality, or other features of the goods and/or services concerned;

-  contains official marks or hallmarks of quality control or warranty, or imitations thereof;

-  represents or imitates a national or religious symbol.

Relative grounds for refusal are those based on a collision between the mark claimed and the prior trade mark, or another intellectual property right of a third party.

The mark might be rejected if it:

-  is identical with a protected mark of another person for identical goods and/or services;

-  is identical to an earlier protected mark of another person for a similar type of goods and/or services, or which is similar to an earlier protected mark of another person for an identical or similar type of goods and/or services, if such identicalness and/or similarity are likely to cause confusion in the relevant part of the public, including the likelihood of association of that mark with the earlier protected mark;

-  is identical or similar to a mark for identical or similar goods and/or services, which is well-known in Serbia and Montenegro within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property;

-  regardless of the goods and/or services concerned, is a reproduction, imitation, translation or transliteration of a registered trademark, or the essential segment thereof, which is known without any doubt to those participating in the commerce in Serbia and Montenegro as a mark of widespread reputation used by other persons for marking their goods and/or services, if the use of such a mark would result in an unfair benefit from the reputation acquired by the well-known trademark or in harm to its distinctive character and/or reputation;

Application content:

Foreign natural and legal persons shall be represented in the proceedings before the competent authority by a professional representative registered in the Register of Representatives maintained by the competent authority, or a domestic attorney.

The procedure for the trademark registration shall be initiated by filing an application for trademark registration.

The essential elements of the application shall be:

-  the request for the trademark registration;

-  the mark for which protection is requested;

-  the list of goods and/or services to which the mark relates;

-  First name and the last name, or the company name and the address of the applicant

Application process:

The application is divided in several step.

The formal examination will verify if the application contains the elements required by the law.

If all the required elements were provided, the Intellectual Property Office (IPO) will proceed to the substantive examination, and will verify if the applied trademark comply with trademark register requirement, and if there is any ground for refusal.

In the substantive examination stage, the applicant is notified about all the reasons making his mark non-registrable, and he is given the possibility of taking the necessary steps for eliminating the deficiencies.

In every stage of this procedure, any third party concerned may file a complaint to the trade mark registration, invoking either relative or absolute grounds for the refusal of protection. This complaint does not have a binding effect for the examiner, and is only an indication of potential reasons for refusal, which the examiner has to take into account in examining the application. Since the applicant is not a party to the proceeding, the examiner will not send him any notifications about his decision.

If the application meets requirements for the registration of a trademark, the competent authority shall request the applicant to pay a fee for the first ten years of protection and the costs of publication of the trademark and to furnish the evidence of payment. After payment of the fees, the trademark shall be entered in state trademark register, IPO Official Gazette and will issue a trademark certification.

Refusal:

Where the application does not contain those elements, the competent authority shall request the applicant to correct the deficiencies because of which it has not been possible to enter the application into the appropriate register within a period of 30 days, if he doesn’t the application will be rejected.

If the applicant corrects deficiencies within this period, the competent authority shall, by an individual decision, recognize the date when the motion correcting deficiencies was received as the filing date of the application, and enter it in the register of application.

During the substantive examination, if the trademark meets some absolute ground for refusal, or one element of the trademark is not considered as distinctive, the applicant will be asked to correct it.

If the trademark is identical or similar to an earlier trademark the application will be rejected, unless the owner of the trademark consents to the registration of the later one.

Every decision of the IPO concerning the registration of the trademark can be appealed.

Rights of exploitation and related delay:

Trade mark registration provides the holder of the respective trade mark with the exclusive right to use the protected mark for identifying the goods or services to which the mark applies, as well as to prohibit other persons from using the same or similar mark for identifying same or similar goods or services without an authorization to do so, if the mark is liable to cause confusion in trade. This right includes:

-  applying the protected mark to the goods or their packaging;

-  offering the goods, trading in the goods or storing them for that purpose, or providing services under the protected mark;

-  importing or exporting goods under the protected mark;

-  using the protected mark in business documents or advertisements. An applicant is also entitled to all the rights listed, starting from the filing date of the application, and so is the holder of a well-known mark.

The duration of a trademark shall be ten years counting from the date of filing the application, and its validity may be renewed for an indefinite number of times upon filing a request and payment of the prescribed fee. The request for the renewal of the validity of a trademark shall include in particular: an indication specifying the trademark registration number and the date of lapse of the trademark; data about the trademark holder; data about the payment of the fee for the renewal of the validity of the trademark.

The trademark owner is also allowed to transfer or license his rights.

Transfer:

The assignment of a trademark and/or rights arising from the application may be the consequence of an assignment agreement, a change of status of the trademark holder and/or the applicant, or a court or administrative decision.

Transfer's conditions:

The trademark has to be registered in the State trademark register, it must contain some elements:

-  The date of signing the agreement,

-  name and surname or business name, domicile or residence and/or seat of the contractual parties,

-  the trademark registration number and/or the number of the trademark application and the amount of fee

Registration of the assignment of a trademark and/or the rights arising from the application shall not be granted if such assignment is liable to cause confusion in trade.

Certification:

The trademark registration certificate shall be considered to be a decision in an administrative procedure. A trademark registration certificate shall contain, in particular:

-  the trademark registration number and the date of entering of the trademark in the Register of Trademarks;

-  data about the trademark holder;

-  a representation of the protected mark;

-  a list of the goods and/or services the mark refers to;

-  the date of lapse of the trademark.

The draft law amendment that didn't entry in force yet, will make the issuance of certificate optional, only at the request of the right holder.

Withdrawal and cancellation:

The trademark application can be withdrawn at any time during the application’s process until it has been published.

The trademark will be revocated for:

-  non use for five year since the filing of application

-  Expiry of the legal 10 years protection without extension

-  the trademark has become a generic term

-  the trademark has become deceptive

-  the trademark is identical or similar to another registrated earlier

-  the mark has become contrary to morality or public order

Customs protection:

The applicant shall first register to the custom in paper or electronic form to the custom of Republic of Serbia. The custom will take decision in 30 days and will grant the protection for one year.

If customs finds some goods suspected of trademark infringement, it will notify the headquarter that will notify the right holder. The trademark owner will be invited to inspect those goods and maybe take sample of those.

Then the right holder has 10 days to make an action in court, otherwise the goods will be release (3 days for perishable goods). This 10 days period can be extended but the right holder will to pay for it.

If the goods are declared infringement by decision of the court, or the right holder and the owner of the goods have an agreement, the good will be destroyed.

Sources:

Wipo.int: Trademark Law, The Methodology Applied by the Intellectual Property Office to the Procedure Relating to the Registration of Trade Marks and the Procedures Based on Registered Trade Marks.

http://www.eu-pregovori.rs/files/File/documents/skrining/bilateralni/prezentacije/pg29/pg29_21.pdf