眾律國際法律事務所

Trademark system in Montenegro

Introduction:

Language: Montenegri is the official language, but it co-exist with Serbian, Albanian, and Bosnian, the major part of the population is speaking Serbian.

Capital: Podgorica

Area: 13,812 km2

Population: 622,159 (2015)

Currency: Euro

Religions: Christian Orthodox, Muslim, Catholics

Geographical situation: in Southeastern Europe. It has a coast on the Adriatic Sea to the south-west and is bordered by Croatia to the west, Bosnia and Herzegovina to the northwest, Serbia to the northeast, Kosovo to the east, and Albania to the south-east.

International treaty membership:

Strasbourg Agreement Concerning the International Patent Classification (January 6, 2013)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (March 9, 2012)

Convention Establishing the World Intellectual Property Organization (June 3, 2006)

Madrid Agreement Concerning the International Registration of Marks (June 3, 2006)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (June 3, 2006)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (June 3, 2006)

Paris Convention for the Protection of Industrial Property (June 3, 2006)

Trademark Law Treaty (June 3, 2006)

Legislation:

Law on Trademarks (Official Gazette of Montenegro, No. 72/2010) (amended in 2016)

Government Institutions:

Intellectual Property Office of Montenegro

Type of trademark:

A mark may consist of words, slogans, letters, numbers, images, drawings, combination of colors, three dimensional shapes, combination of such marks, as well as musical phrases, represented by musical notes.

The mark can be individual or collective.

Ground for refusal:

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

Absolute ground for refusal, a trademark shall not be use to protect a mark:

-  devoid of any distinctive character;

-  consisting  exclusively  of signs or indications which  in trade serve to designate a kind, quality, quantity, intended purpose, value, or  time of production  of the goods or  rendering  of the services or other characteristics of the goods or services; -  Consisting exclusively of indications which in trade serve to designate geographical origin of the goods and/or services;

-  Consisting exclusively of indications that have become customary in the current language or in the bona fidae established practice of trade;

-  Consisting exclusively of a shape which results from the nature of the goods or a shape of goods which is necessary to obtain a technical result or of a shape which gives substantial value to the goods;

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

-  Which is of such  a nature as to  deceive the public in particular with regard to the nature, quality or geographical origin of the goods or services;

-  Which cannot be registered in accordance with Article 6ter of the Paris Convention; 10) Which represents a national or religious symbol;

-  Which contains official marks or hallmarks used for quality control or guarantee;

-  Which contains or consists of geographical indication identifying wines and spirits, with respect to such wines and spirits not having that origin

-  If the filed application is contrary to good business practices.

Relative ground for refusal:

Based on an opposition a trademark shall not be registered:

-  Should such trademark be identical to an earlier registered trademark for the same type of goods and/or services for which the new registration is applied for;

-  Should, because of its identity or similarity with goods and/or services covered by the trademark, there exists a likelihood of confusion on the part of the public due to  the likelihood of associating with the earlier trademark;

-  A trademark which is notorious and/or well-­known in Montenegro on the day of application for the registration.

-  Based on an opposition, the trademark shall not be registered if such trademark contains a personal name, portrait and if it infringes a copyright or other industrial property rights.

Application content:

The application shall contain the following elements:

-  A request for the registration of a trademark;

-  Information identifying the applicant;

-  Representation of the mark for which trademark protection is sought;

-  List of goods and/or services for which the registration is sought, classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;

-  Proof of payment of administrative fees;

-  Power of attorney, if the application has been filed through a representative.

Application process:

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 in Official Gazette 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.

Refusal:

The application will be rejected if the applicant doesn’t provide the required documents for application, do not pay the corresponding fees, meet some absolute ground for refusal or is being opposed by a third person on the base of relative ground.

Rights of exploitation and related delay:

The holder of the trademark shall be exclusively entitled to use the sign protected by a trademark for marking of goods and/or services to which such mark pertains.

The rights holder shall also prevent other person to use the trademark for same goods and service, or without any distinctive characters.

This exclusive protection is valid for 10 years and indefinitely renewable for 10 years every time. The renewal shall be done from 6 months before the expiry to 6 months after.

The right holder is allowed to contract a license agreement with another party or to transfer his right to a third person.

Transfer and conditions:

The holder of the trademark right may transfer to another person the trademark either for all or some goods and/or services for which such trademark has been registered.

The procedure for the entry of the trademark transfer shall be initiated on the basis of a written request accompanied by:

-  The proof of legal title for the entry;

-  The power of attorney if the procedure for the registration of the transfer, license or pledge is initiated through an agent;

-  The proof of payment of the administrative fees charged for the registration of a transfer.

The transfer of the trademark shall be entered into the Register and published in the Official Gazette.

Certification:

The competent authority may issue a trademark certificate, at the request of the right holder, along with proof of the payment of the prescribed administrative fee

Withdrawal and cancellation:

The application for a trademark protection can be withdrawn at any time before it is published.

The trademark protection will cease if:

-  The trademark holder surrenders his right.

-  A court make a decision to revoke it

-  The right holder die, or the legal entity is in a situation of liquidation.

The ceasing of the right shall be published in the Official Gazette.

The protection of the trademark can also be cancelled if a person claims on court for:

-  The trademark has been registered in bad faith

-  The trademark has been registered in contradiction with the grounds for refusal

-  The use of the trademark has mislead the public

-  Another person or legal entity has a prior right on the trademark

-  The trademark has not been use for an uninterrupted period of five years without a justified reason.

Customs protection:

The Request for customs protection shall be submitted to the administration authority competent for customs affairs (hereinafter referred to as the Customs Administration) in writing or electronic forms.

The Request shall contain the following data:

-  data on the applicant (name and surname, address, temporary residence or permanent residence, and contact telephone number);

-  the status of the applicant;

-  evidence establishing that the applicant is entitled to be submit the Request;

-  data on representative (name and surname, address and contact telephone number) and authorization for representation;

-  the intellectual property right the Request refers to;

-  data on authenticity of goods (bar code and images);

-  data need to enable the customs authority to easily identify form the image goods suspected of infringing intellectual property rights;

-  data relevant to the customs authority’s analysis and assessment of the risk of infringement of the intellectual property right or the related intellectual property rights

The Customs Administration shall adopt a decision granting or rejecting the Request within 30 working days as of the day of receipt of the dully-submitted Request and shall submit it to the applicant. In case the request is accepted, the protection will be valid for 1 year renewable.

If the customs authority, to which the Customs Administration has submitted the decision granting the request, suspects that goods matching the description of the goods covered by such decision are infringing an intellectual property right, it shall detain such goods.

The customs authority shall notify of the detention of the goods immediately the Customs Administration and within one working day as of the detention of the goods the declarant or the holder of the goods.

The customs authority shall enable the approval holder and the declarant or the holder of the goods of the opportunity to inspect the goods which have been detained.

Upon request of the approval holder, the customs authority may take samples of the goods, upon their detention and deliver them to the approval holder strictly for the purpose of analysis of samples of the goods and use in the procedures in relation to counterfeit and pirated goods.

After 10 working days, or 3 days for perishable goods, the goods shall be destroyed by the customs, by decision of court, or if the holder of the goods has issued a consent to the customs authority or has failed to file an objection to the destruction of the goods.

Sources:

• WIPO.int:

Law on Trademarks (Official Gazette of Montenegro, No. 72/2010) (amended in 2016)

Decree on the Customs Authority Treatment of Goods under Reasonable Suspicion of Infringing Intellectual Property Rights (Official Gazette of Montenegro, No. 48/2016)

• www.country-index.com

Vincent Lagier