Prepared by:
Tarik Prolaz, PETOŠEVIĆ

Bosnia and Herzegovina is a good example of an Eastern European country in transition, with all the “childhood sicknesses” of a young democratic and business society. Accession to the EU is one of the goals that is undisputed by any of the dominant ethnic or political groups in Bosnia, and many steps have been taken towards this objective. Some of the steps include ratification of the Stabilization and Association Agreement (SAA), free trade agreements with the neighboring countries, and CEFTA.

• Patent Law,

• Trademark Law,

• Law on Industrial Designs,

• Law on the Protection of Indications of Geographical Origin, and

• Law on the Protection of Topographies of Integrated Circuits.

The whole set of laws entered into force on January 1, 2011, replacing the old Industrial Property Law that was in force.

PATENT LAW

The new Patent Law stipulates that an applicant is entitled to request patent protection:

1. Through substantive examination of a patent application;

2. Based on a submitted substantive examination of a patent application accepted in Bosnia; or

3. By delaying substantive examination of an application and obtaining a consensual patent. A consensual patent is granted based on public consensus, meaning that it is granted if there are no objections by third parties. The duration of a consensual patent is 10 years.

The new law also introduces restoration and continuation of proceedings. Previously, restoration was governed by the provisions of the general Administrative Proceedings Law and, as such, was not fully suitable for IP rights.

The law also regulates Supplementary Protection Certificates and corresponding procedures. The previous IP Law addressed this issue in just one paragraph, allowing supplementary protection in the cases of war and similar emergencies (for the duration of such emergencies) and for patents requiring prior official consent for marketing (for the period required to obtain such a consent).

The Patent Law also introduces new and improved PCT provisions and contains provisions on European Patent extensions. This is an improvement because Bosnia’s legislation was never amended to include and address the signing/ratification of the Agreement between Bosnia and Herzegovina and the European Patent Organisation on Co-operation in the Field of Patents in 2004. Until January 1, 2011, extensions were governed solely on the grounds of the Agreement.

The law also includes provisions on customs and border measures for protection of patent rights. The previous law contained only one provision on custom and border measures, but without any further guidance on their implementation. This caused difficulties in obtaining customs protection. For the first time, Bosnia and Herzegovina has clear and concise provisions on customs monitoring, requirements, duration, proceedings and deadlines. Previously, all proceedings related to customs monitoring were ad hoc and usually varied among the customs offices throughout the country.

TRADEMARK LAW

The biggest change introduced with the new Trademark Law is the opposition procedure, meaning that the PTO of Bosnia and Herzegovina now examines trademark applications only on absolute grounds. The IP Law that was in force in Bosnia and Herzegovina until January 1, 2011 specified that trademark applications should be examined on both relative and absolute grounds. The PTO of Bosnia and Herzegovina, just like many PTOs of countries in transition is understaffed and this practice of full examination resulted in an almost 5-year delay in the examination procedure.

In addition to the individual and collective trademarks, the Trademark Law also introduces warranty trademarks, as well as disclaimers.

The new law also contains provisions on exhaustion of rights. The earlier law had no such provisions and the question of exhaustion was always unclear.

Customs measures are also regulated and are identical to the ones prescribed for patents.

INDUSTRIAL DESIGN

As stipulated in the Law on Industrial Designs, a protected design must be convenient for industrial or craft production. A design that has exclusively esthetical characteristics represents a work of art and is therefore protected by copyright. The earlier IP Law allowed registration of purely aesthetical characteristics of a product (fashion creations, etc), while the current law prescribes that such creations should be protected by copyright,

The new law also introduces opposition, in accordance with the Hague Convention on the International Registration of Industrial Designs and Models. It also contains full provisions on customs protection, assignment of right, and licensing.

According to the old IP law in Bosnia and Herzegovina, designs were valid for 10 years, without the possibility of renewal. The new Law on Industrial Designs prescribes that designs will be valid for 25 years, with 5-year renewal periods.

The provision on international exhaustion of rights is also introduced with the new law.

GEOGRAPHICAL INDICATIONS

The Law on the Protection of Indications of Geographical Origin introduces the opposition system in the application examination procedure. The supervision by market inspectors and administrative measures are introduced, as are the customs and seizure measures and measures for securing evidence and deposit insurance funds. The law also ensures protection of traditional, historic and homonymous names.

The court now has jurisdiction to determine the geographical indications of origin, while prior to January 1, 2011, this was one under the jurisdiction of the PTO.

TOPOGRAPHIES OF INTEGRATED CIRCUITS

Bosnia and Herzegovina has made an important step toward harmonizing its legislation with international standards in the area of topographies of integrated circuits.. The Law on the Protection of Topographies of Integrated Circuits follows the Council Directive 87/54/EEC, relevant TRIPS provisions, and the Washington Treaty. So far there have been no topography registrations in Bosnia and Herzegovina, and the lack of legislation is certainly one of the reasons. Prior to January 1, 2011, topographies were regulated by a mixture of legislations remaining from the former Yugoslavia and by entity level legislation.

CONCLUSION

Years 2010 and 2011 have seen tremendous change in the area of intellectual property law developments in Bosnia. Past and current efforts of the local government and internationally funded IPR projects have created a solid legal ground for an efficient and modern system for obtaining and enforcing intellectual property rights. The Bosnian Institute for Intellectual Property acknowledges the significance of intellectual property for Bosnia and Herzegovina’s transition toward a society based on technology, knowledge and creativity. The Strategy drafted by the Institute aims to position the Institute as the focal point for initiating, moderating and coordinating the activities for continuing development of the newly formed system for protection of intellectual property rights in Bosnia and Herzegovina. It also foresees that the number of employees of the Institute will increase significantly in the following year or two, estimating that by year 2015 the Institute will be in full capacity to take the leading role in the field of intellectual property in Bosnia and will be ready to stand shoulder to shoulder with the IP institutions in the region. Intellectual property is one of the first successfully completed chapters in the process of harmonizing the local legislation with the EU legal system. We hope that the remaining segments will be completed equally efficiently.

COUNTRY FACTS

Location

Albania is located in Southeastern Europe. It borders the Adriatic Sea to the west and the Ionic Sea to the southwest, Montenegro to the northwest, Kosovo to the northeast, the Republic of Macedonia to the east, and Greece to the south and southeast.

Major Cities

Tirana (capital), Durrës, Korçë, Elbasan, Shkodër, Gjirokastër, Vlorë and Kukës

Government

Parliamentary democracy

Legal System

Civil law

Currency

Lek (ALL)

Est. GDP

US $23.95 billion (2010 est.; PPP)

Per capita (PPP): US $8.000 (2010 est.)

Economic Sectors

(2010 est.)

Agriculture: 58%

Industry: 15%

Services: 27%

International IP Agreements

• WTO/TRIPS Agreement
• WIPO Convention
• Paris Convention
• Madrid Agreement/Madrid Protocol

See Trademark Practice and Forms, International Trademark Protection

Applicable Classification

• International Classification (Nice)
• Multi-class registration

Home Registration

Not required

Right to Trademark

First to file (Industrial Property Law, Art. 144)

Duration of Protection

Initial Period: 10 years from the application date
Source: Industrial Property Law, Art. 164

Renewal Period: 10 years
Source: Industrial Property Law, Art. 164

Registration Priority

Paris Convention priority available
Source: Industrial Property Law, Art. 147-148

OVERVIEW: POLICIES AND TRENDS

Trade and Regulatory Climate

Over the past twenty years Albania has been undergoing a long transformation from a communist, centrally planned economy to a liberal and market-oriented economy. During this transition, Albania implemented many economic, legal and institutional reforms, which resulted in the country’s accession to the WTO in 2000 and an application for the European Union membership on April 28, 2009.

The ongoing changes in the economy can be characterized by a growing services sector and a slowly decreasing agriculture sector. In 2003, Albania adopted the legislation on protection of competition and established the Competition Authority, which contributed towards enhancing competition on the market. The current investment-oriented government of Albania can be characterized by its openness to foreign investments and an increased level of protection of investors’ rights. As a result, foreign direct investments amounted to EUR 675 million in 2008. Albania has an open trade government, which, nevertheless, is less open than those of the average European and Central Asian countries. So far Albania has not been involved in any dispute under WTO rules.

The legislation on intellectual property rights has been significantly improved during the process of Albania’s accession to the WTO. New laws on copyright (2005) and industrial property rights (2008) were introduced in order to harmonize the Albanian IP legislation with the EU directives. In 2010 the Council of Ministers of Albania adopted the IPR Enforcement Strategy for 2010-2015.

Why Register Locally?

According to the Industrial Property Law of Albania, the rights to a trademark can be obtained only through the registration of a mark. Although any person can use his/her mark for his/her goods/services without registration, the legislation does not prescribe enforcement of non-registered trademark rights. Moreover, since the Albanian legislation follows the “first-to-file” rule, it is recommended to file an application for trademark registration as soon as possible, before any other person files an application for the same mark.

The Future

Considering that Albania introduced new legislation on protection of intellectual property rights recently, no further developments are expected in this area in the near future. On the other hand, the IPR Enforcement Strategy for 2010-2015 foresees a number of improvements to the IPR-enforcement system, which should be implemented in the following years. The suggested improvements include cooperation and coordination of various institutions involved in enforcement of IP rights, training of specialists and education of the public about IP rights, introduction of criminal penalties for infringement of IP rights, etc.

OVERVIEW: LAWS, RULES, REGULATIONS

The Law of the Republic of Albania on Industrial Property no. 9977 of July 07, 2008
Effective as of November 01, 2008

The Regulations for the Registration of Trade and Service Marks Approved by the Decree of the Cabinet of Ministers no. 1706 of December 29, 2008
Effective as of February 04, 2009

REGISTRATION REQUIREMENTS

What is a Mark?

Any sign or combination of signs represented graphically, which serve to distinguish goods and/or services of one natural or legal person from those of another natural or legal person, can be registered as a trademark.

Any of the following may be registered as a trademark:

• Words, including personal names, letters, numbers, abbreviations;
• Figurative signs, including drawings;
• Two or three-dimensional signs, shapes of goods and/or of its packaging;
• Combinations of colours or shades, including colors per se;
• Any combination of the above listed signs.

Nontraditional marks, such as sound and light marks, which can be represented graphically, can also be registered in Albania.

Which Marks May be Registered?

Trademark for Goods / Trademark for Services (Service Mark)

According to the Industrial Property Law, there is no difference between Trademarks [Marks for Goods] and Service Marks [Marks for Services]. Although Part IV of the Industrial Property Law is titled “Trademarks and Service Marks”, the very first article of Part IV of the Law indicates that the term “mark” is used to designate both marks that are registered for goods and marks registered for services. Similarly, according to the Regulations, “mark” can be used for both trademarks and service marks.

However, in the daily vocabulary of a trademark agent the term “service mark” is sometimes used to distinguish marks used or registered for services from those that are registered for goods only (“trademarks”).

Collective Trademark

A collective mark is a trademark that can be registered and used by a commercial or industrial association, group or other similar union of legal entities to distinguish the goods/services that are produced/rendered by the members of such union from the goods/services of other persons.

Any group of legal entities, which is registered in Albania and has all rights and obligations of a legal entity, can be an applicant for a collective trademark.

An application for registration of a collective trademark should be accompanied by regulations on use of a collective mark.

Certification Trademark

The Industrial Property Law does not contain any specific provisions regarding certification trademarks.

Colored Trademark

Colors or combinations of colors can be registered as trademarks in Albania if such marks comply with the requirements for registration of a trademark as prescribed by Articles 140-143 of the Industrial Property Law.

What Cannot be Registered?

The following cannot be registered as a trademark in Albania:

Non-distinctive or Descriptive Marks

A sign cannot be registered as a trademark if:

• It is devoid of any distinctive character;
• It consists exclusively of elements that may serve in the market to indicate the kind, quality, amount, purpose, value, geographical origin or time of production of the goods or the performance of the services, or any other characteristics of the goods or services;
• It consists exclusively of elements that have become customary in daily language or in established practices of the trade;
• It consists of forms or lines which result from the nature of the goods or services or which are essential for obtaining a technical result;
• It consists of forms or lines that add substantial value to the goods.

Marks That Are Immoral

A sign cannot be registered as a trademark if it consists of elements that violate public interests or are in conflict with the public moral or public order.

Deceptive Trademarks

The following signs cannot be registered as a trademark in Albania:

• Signs that consist of elements tending to mislead the public as to the nature, quality or geographical origin of the goods or services for which a sign is applied;
• Signs that consist of geographical indications for wines or alcoholic beverages, which do not originate from the area indicated by the geographical indication, even if the actual area of origin of goods is indicated or a geographical indication has been translated and is accompanied by such words as “kind”, “type”, “style”, “imitation” or other similar words.

Marks with Unauthorized Content

Any of the following signs shall not be allowed for registration:

• Signs that consist of names, portraits or pseudonyms of individuals that are well-known among the public in Albania, if no authorization or consent has been obtained from the person concerned or his/her descendants for use of such signs in a trademark;
• Signs that consist of names of countries (full or abbreviations); state emblems; medals; official seals or signs adopted by the Government; emblems of well-known international organizations, including abbreviations of their names; religious symbols; national flags, etc.;
• Signs that consist of elements of well-known trademarks protected according to Article 6 bis of the Paris Convention.

Identical, Similar

A sign cannot be registered as a trademark in Albania if:

• It is identical with an earlier trademark, and the goods and/or services for which the mark is applied for are identical with the goods and/or services for which the earlier mark is protected;
• It is identical with or similar to an earlier trademark, which is protected for identical or similar goods or services, and because of the similarity of the marks and the goods or services covered by them, there exists a likelihood of confusion on the part of the public, which includes likelihood of association with the earlier mark;
• It is identical with or similar to an earlier trademark and is applied for goods/services that are not similar to those for which the earlier mark is registered, where the earlier trademark has a reputation in the Republic of Albania, and where the use of the later-registered mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark;
• It is identical with or similar to the full or substantial part of a commercial name where the owner of such commercial name produces goods or provides services that are identical or similar to those goods or services for which the mark is applied;
• It is identical with or similar to the name, surname or appearance of a natural person;
• It reproduces or is similar to any industrial property right valid in Albania, including the names of protected varieties of plants or animals, or geographical indications;
• It is identical with or similar to any copyrighted work, including a part of such work.

Who Can Register?

Proprietor or User

Any natural person or legal entity has the right to apply for registration of a trademark in Albania.

Authorized Agent

Persons who do not have a permanent residence in Albania and legal entities that do not perform commercial activities in the territory of Albania cannot file trademark applications or communicate with the Albanian Patents and Trademark Office directly. Such persons should act before the Albanian Patents and Trademark Office through an authorized representative in Albania. A respective Power of Attorney should be provided to confirm the authority of a representative to act on behalf of the applicant.

See Registration Forms; Power of Attorney

Priority Registrant

An applicant for registration of a trademark in a country member of the Paris Convention or member state of the World Trade Organization shall enjoy - for the purpose of filing a trademark application in Albania for the same trademark in respect of the same goods and/or services - a right of priority subject to filing of a trademark application in Albania within a six-month period from the date of filing of the first application. The same rule shall apply to cases where a trademark was first displayed for the respective goods and/or services at an international exhibition taking place in a country that is party to the Paris Convention (first exhibition), not more than six months before filing the trademark application in Albania.

TRADEMARK REGISTER

Where is the Trademark Registered?

Trademark Register

The General Directorate of Patents and Trademarks, also known as the Albanian Patents and Trademark Office (herein after – the “ALPTO”) is a specialized governmental institution within the Ministry for Economy, Trade and Energy, responsible for registration and protection of industrial property rights in Albania.

The ALPTO maintains and administers, inter alia, the following registers:

1. Register of applications for registration of marks;
2. Register of registered marks;
3. Register of authorized representatives for marks (trademark agents).

The information contained in the registers is open to the public. Upon filing of a written request and payment of the official fee, the ALPTO shall provide an extract containing comprehensive data regarding a trademark registration concerned. Official trademark availability searches are also performed by the ALPTO upon receipt of a corresponding request and payment of the official fee.

The Newsletter of the ALPTO, which contains information concerning national trademark registrations in Albania in .xls format, is occasionally published on the official website of the ALPTO. However, the Newsletter does not contain graphical representation marks containing figurative elements.

Requirement of Distinctiveness

According to the Industrial Property Law, a sign cannot be registered as a mark in Albania if it is devoid of any distinctive character.

A separate Article of the Industrial Property Law is dedicated to the notion of distinctiveness. According to Article 141 of the IP Law in Albania, a sign should be considered distinctive if an average consumer can distinguish the goods and/or services of one undertaking from goods/services of other undertakings. The distinctive character of a sign should be evaluated in close connection with the goods/services it is intended to distinguish.

Exclusive Use Rights

The owner of a registered trademark is entitled to an exclusive right to use the trademark in the territory of Albania for the goods/services for which the trademark is registered.

The trademark owner is also entitled to prevent third parties from using the following in the course of trade, without his/her consent:

• A sign that is identical to the registered mark for identical goods/services;
• A sign that is identical or similar to the registered mark if, because of the identity or similarity of the goods/services for which the sign is used with the goods/services covered by the registered mark, there exists a likelihood of confusion among the public, including the likelihood of association between such sign and the registered mark;
• A sign that is identical/similar to the registered mark and is used for goods/services that are neither identical nor similar to the goods covered by the registered mark, where the registered mark has a reputation in the Republic of Albania and where the use of such sign without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the good name of the registered mark.

In particular, the following actions may be prohibited by the owner of the registered mark:

• Affixing the sign to the goods or to the packaging thereof;
• Putting the goods on the market, offering the goods for sale, storage of the goods for the mentioned purposes under that sign;
• Offering the services under that sign;
• Importing or exporting the goods under that sign;
• Using the sign in business or in advertising.

The owner of a non-registered mark which has been recognized as well-known in Albania is also entitled to the above indicated exclusive use rights.

Limitation on Exclusive Use Rights

The owner of a registered mark cannot prevent any third party from using, in the course of trade and in accordance with honest business practices:

• His/her (the third party’s) name and address;
• Indications of the type, quality, amount, destination, value, place of origin, time of production or other characteristics of the goods or performance of the services;
• The registered mark, where it is necessary to indicate the intended use of the goods/services, in particular in the case of accessories or auxiliary parts to the goods marketed under the mark.

Enforcement

Where exclusive rights of an applicant, an owner of a mark, a licensee or any other authorized user of the mark as prescribed by the Industrial Property Law are infringed by a third party, such authorized user can file a lawsuit for protection of its respective trademark rights before the court. According to the Industrial Property Law, any unauthorized use, limitation, imitation or joint use of a registered mark, (where someone is using a registered mark along with its own mark), as well as the use of a mark for which an application has been filed or use of a well-known mark, shall be qualified as infringement.

A person whose exclusive rights have been infringed by actions, as indicated above, is entitled to request, in infringement proceedings before the court:

• Prohibition of further acts that constitute infringement of the respective trademark rights;
• Removal of the infringing goods from the channels of commerce or their destruction;
• Removal of equipment used exclusively or nearly exclusively for production of the infringing goods or destruction of such equipment;
• Publication of the final decision of the court in the public media at the expense of the infringer.

A lawsuit for infringement of trademark rights can be filed with the court within three years of the date when the plaintiff became aware of the infringement and of the identity of the infringer.

Validity

A registered mark is considered valid within its protection period, unless it has been declared to the contrary. A registered mark can be invalidated before the court if it has been registered in breach of the absolute or relative grounds for refusal (Articles 142 and 143 of the Industrial Property Law).

A mark can also be revoked by the court if:

• It has not been put to genuine use for the goods it is registered for in the Republic of Albania within an uninterrupted period of five years;
• It has become an ordinary (generic) name in the market for the goods or services for which it is registered;
• As a consequence of the use of the mark by its owner or with the owner’s consent for the goods and services for which it is registered the mark misleads the public as to the nature, quality or geographical origin of such goods/services.

INITIAL REGISTRATION

Procedural Timeline

Search and advice

It is not required to conduct a search before filing a trademark application in Albania. However, an official trademark availability search can be ordered with the ALPTO.

Important! ALPTO is currently able to perform only word mark searches on the trademark database.

A report on the results of the search does not contain an opinion of the PTO regarding similarity of the trademarks revealed in the course of the search with the intended mark.

Application and fees

An application for trademark registration shall be completed according to the form FM1, which should be signed by the applicant or its representative. An application can be filed with the ALPTO directly at the Protocol Office or sent by mail or fax. If an application is sent to the ALPTO by fax, the original thereof should be submitted to the ALPTO within a month.

The trademark application should be filed in Albanian and signed by the applicant or its representative. A separate application should be filed for each trademark. The application should be accompanied by supporting documentation, according to the ALPTO rules and regulations.

See Registration Forms

Formal Examination

Formal examination of trademark applications is conducted by the ALPTO in the order that they were filed, based on the filing date. However, applications for International Registrations under the Madrid System for International Protection of Trademarks and applications for an accelerated registration of a trademark, where infringement of rights to a non-registered trademark has taken place in Albania, shall have priority over regular trademark applications.

Formal examination of a trademark application shall be completed within three months of the filing date. If an application meets all formal requirements as prescribed by the Industrial Property Law and the Trademark Regulations, the ALPTO enters the information about the trademark application in the database of applications and issues a filing certificate for the trademark application.

If a trademark application does not meet the formal requirements as provided by the Industrial Property Law and/or the Trademark Regulations, the ALPTO invites the applicant to remedy the deficiencies of the application within a period of three months from the notification date. The term for remedying the deficiencies in the application can be further extended by one additional month upon filing of a request and payment of the official fee.

If the applicant remedies the deficiencies in the application within the set term, the ALPTO enters the information about the trademark application in the database of applications and issues a filing certificate.

However, if the applicant does not remedy the deficiencies in the trademark application within the prescribed period of time, the ALPTO issues a decision on refusal of the trademark application.

Filing Certificate/Serial Number

A filing certificate is issued by the ALPTO upon completion of the formal examination of a trademark application. A filing certificate contains the following information:

• Representation of the sign;
• Name and address of the applicant;
• Filing date and serial number of the application;
• List of goods and/or services;
• The colors of the mark (where colors are claimed as a distinctive feature);
• Elements excluded from protection (if any);
• Priority (if any).

Publication

A trademark application that has successfully passed the formal examination stage will be published in the official Industrial Property Bulletin of the ALPTO. The ALPTO publishes its Industrial Property Bulletin approximately once every three months.

The information about trademark applications as published in the Industrial Property Bulletin contains:

• Trademark application number;
• Filing date of the application;
• Priority date (if any);
• Name and address of the applicant;
• Representation of the mark;
• Elements excluded from protection (if any);
• The colors of the mark (where colors are claimed as a distinctive feature);
• List of goods and/or services.

Oppositions/Observations

An opposition against a trademark application can be filed with the ALPTO within three months of the date the application was published in the Industrial Property Bulletin. The grounds for filing an opposition against a trademark application are the relative grounds for refusal, as prescribed by the Industrial Property Law . An opposition can be filed by any person enjoying an earlier right, i.e. an applicant for an earlier trademark application, the holder of a registered mark, the owner of a registered commercial name, a person whose name is similar to the mark applied for registration, the owner of an earlier right of industrial property, as well as the owner of an earlier copyright.

The term for filing an opposition as indicated above cannot be further extended.

An opposition should be accompanied by the following documents:

• The opposition form FM9;
• An invoice confirming payment of the official opposition fee;
• A Power of Attorney where an opposition is filed by a representative of the owner of the earlier right that is used as a basis for the opposition;
• A certificate or any other document confirming the validity of an earlier right.

The ALPTO Appeal Board shall consider oppositions within three months from their filing date.

If the opposition form is not properly completed or if proof of payment of the opposition fee is not provided, the ALPTO shall consider the opposition as if it has not been filed. However, if an opposition is filed without a Power of Attorney (where required) or a document confirming the validity of an earlier right, the ALPTO shall invite the opponent to submit the missing documents within 30 days of the date of the submission of the opposition.

If an opposition meets all formal requirements as prescribed by the Industrial Property Law and the Trademark Regulation, the ALPTO will notify the applicant about the opposition filed and will invite him/her to submit his/her written reply to the opposition, accompanied by a document that will support his/her claim, within a month from the notification date. During the opposition proceedings, the ALPTO may request from the parties to the proceedings to submit additional materials or documents within a month of the date of such request. The ALPTO Appeal Board’s decision can be further appealed before the court of first instance within 30 days of the date the decision was passed.

Substantive examination

Within three months of the date a filing certificate is issued, the ALPTO shall conduct a substantive examination of the trademark application. During the substantive examination, the ALPTO examines an application for absolute grounds for refusal only.

Before a decision on the results of the substantive examination is made, the ALPTO may ask the applicant to submit additional documents within a period of two months. If the applicant fails to file the requested documents, the application will be refused by the ALPTO and the applicant will be notified about the refusal through written communication.

Re-examination

If an applicant does not agree with the refusal of its trademark application as issued by the ALPTO following the formal or substantive examination, he or she can appeal ALPTO’s decision before the Appeal Board within two months of the date the decision was passed, upon payment of the prescribed official fee. During the re-examination of ALPTO’s decision, the Appeal Board may request from the appellant to submit additional materials or documents within three months of the date of such request.

The Appeal Board’s decision with respect to refusal of a trademark application following formal examination of the application is final and cannot be appealed before any court. At the same time, the Appeal Board’s decision regarding refusal of a trademark application following substantive examination of the trademark application can be appealed before the court of first instance within 30 days of the date of receipt of the notification on the decision.

Registration

If a trademark application successfully passes the substantive examination and no oppositions against the trademark application are filed within the prescribed term, the ALPTO will grant registration and will invite the applicant to pay the registration fee within a month of the date of such notification. Upon payment of the prescribed registration fee, the ALPTO will enter the information about the registered mark into the Trademark Register and will issue a Certificate of Registration within three months of the date of payment of the registration fee. The ALTPO will then publish the registered mark in the Industrial Property Bulletin.

Average Processing Times

Registration

Application to publication (of registration): 5-7 months;
Official action: up to 6 months;
Issuance of certificate: 3 months.

Opposition: 3 months

Government Fee Schedule

Official fees (EUR) for:

Preliminary search – 5

Application:

1. One class of goods/services – 40;
2. Each additional class of goods/services – 20.

Registration – 55

Renewal:

1. One class of goods/services – 70;
2. Each additional class of goods/services - 35.

Decision Nr. 883 of May 13, 2009 on Approval of the Official Fees for Registration of Objects of Industrial Property

REGISTRATION FORMS

Information Checklist

The Applicant

• Full name of the applicant;
• Full address of the applicant;
• Correspondence address (if different from the applicant’s address);
• Phone, fax, email address of the applicant;
• Legal status of the applicant.

The Mark

• Graphical representation of the trademark to be registered;
• Description of the trademark;
• Type of the mark;
• Transcription or translation of the mark where it contains letters from an alphabet other than Latin or numbers other than Arab or Latin numbers;
• Disclaimer request (if applicable);
• List of the goods and/or services for which the trademark is applied, classified according to the Nice Classification;
• Priority information (if applicable).

Agents and Service

• Name of the authorized representative;
• Full address of the representative;
• Phone, fax, email address of the representative;
• Trademark Agent’s registration number (for applications filed by trademark agents).

Registration Forms

Application for registration of a trademark

Form FM1 (English version) – Application for Registration of a Trademark - is the form for filing of an application for registration of a trademark in Albania. The Application Form is approved by the Council of Ministers.

The Application Form should be completed in Albanian.

Information required:

• Full name, address, contact details, legal status of the applicant;
• Full name, address, contact details, registration number of the Trademark Agent;
• Graphical representation of the trademark;
• Description of the trademark;
• Type of the mark;
• Transcription or translation of the mark where it contains letters from an alphabet other than Latin or numbers other than Arab or Latin numbers;
• Disclaimer request (if applicable);
• List of the goods and/or services for which the trademark is applied, classified according to the Nice Classification;
• Priority information (if applicable).

The FM1 form should be supplemented by the following:

• Payment receipt of the official fee for filing an application and its substantive examination;
• Power of Attorney authorizing the trademark attorney to act on behalf of the applicant (if the application is filed by the applicant’s representative);
• A priority request (if applicable);
• Regulations for use of a collective mark (if applicable);
• Any other document or declaration that the applicant believes should be considered during the examination of the application.

Power of Attorney

The Power of Attorney form authorizes the Albanian trademark agent to act on behalf of the applicant before the ALPTO.

Information required:

• Full name and address of the applicant;
• Name and registration number of the trademark agent;
• Trademark rights in respect of which the authority to act is granted;
• Place, date of execution of the Power of Attorney;
• Full name, position of the signatory and his/her signature.

Important!

A Power of Attorney must be filled in word format (Times New Roman 9).

A company seal/stamp of the principal should be attached to the Power of Attorney. Otherwise, the Power of Attorney should be certified by a public notary.

A separate Power of Attorney should be filed for each trademark.

POST-REGISTRATION

Renewal of Registration

Duration of Protection

The initial registration is effective for 10 years from the filing date. A mark can be renewed for another 10 years, an unlimited number of times, after expiration of the previous period of protection.

Renewal

A request for renewal of a trademark registration should be submitted within six months before the expiration of the term of protection.

After Expiration Renewal

If a renewal request has not been filed within the deadline, the mark can nevertheless be renewed by filing of a late renewal request within a period of six months following the expiration of the term of protection. In case of late renewal, an additional late renewal fee should be paid.

Reinstatement

The Industrial Property Law of Albania does not prescribe a procedure for reinstatement of a mark. Therefore, if a trademark registration expires in Albania, the right to the mark cannot be reinstated.

Advertisement of Renewal

If a request for renewal of a trademark registration is timely filed with the ALPTO and it meets all requirements as prescribed by the Trademark Regulations, the ALPTO will enter the information about renewal of the mark in the State Trademark Register and publish the renewal in the Industrial Property Bulletin.

Alteration or Modification

Correction of mistakes

If the ALPTO issues a document that contains mistakes that were made at no fault of the applicant or the owner of the mark, such mistakes shall be corrected by the ALPTO upon a written request from the applicant or the owner of the mark. Information about correction of a mistake shall, where necessary, be entered into the State Trademark Register and published in the Industrial Property Bulletin.

Corrections To Trademark

A registered mark cannot be altered in the State Trademark Register during the period of its registration or the renewal period.

Corrections To Goods and/or Services

The owner of the mark may file a request for limitation of the list of goods and/or services for which the mark is registered. A payment receipt confirming payment of the respective official fee and a Power of Attorney (where the request is filed by a representative) should be submitted together with the request for limitation of the goods and/or services.

Corrections To Name or Address

Change of the name and/or address of the owner of the mark can be recorded by the ALPTO at the request of the owner. The following should be filed together with the request for recordal of a change of name and/or address:

• Payment receipt confirming payment of the respective official fee;
• Power of Attorney, where the request is filed by a representative of the owner of the mark;
• Official documents confirming the respective changes in the name and/or address of the owner of the mark.

Cancellation of Registration

At Request of Owner

The owner of a registered mark can surrender the mark by filing a respective request with the ALPTO. The surrender can be effected on part or all goods and/or services for which the mark is registered. A request for registration of surrender of a mark should be accompanied by a payment receipt confirming payment of the respective official fee, a Power of Attorney (where the request is filed by a representative of the owner of the mark) and, if a license contract with respect to the mark is registered in the State Trademark Registry, a declaration issued by the licensee confirming that he or she agrees to the surrender of the mark. Information about the surrender of the mark will be published in the Industrial Property Bulletin.

Actions by Court

Revocation of a trademark registration

Upon a request filed by an interested third party, the court shall revoke a trademark registration if the trademark registration has not been put to genuine use in the Republic of Albania by its owner within an uninterrupted period of five years. However, the mark cannot be revoked on this ground if:

• It has been used within the mentioned period of five years by a licensee of the mark or any other person with consent from the owner of the mark;
• It has been used in a form that differs from the registered mark in elements that do not alter the distinctive character of the mark;
• It has been attached to the goods or packaging thereof solely for export purposes;
• It has been used for publicity and in business correspondence.

The court shall also revoke a trademark registration, upon a request filed by an interested third party, if:

• As a consequence of acts or inactivity of the owner, the mark has become an ordinary (generic) name with respect to the goods and/or services for which it is registered;
• As a consequence of use of the mark by the owner or with his or her consent for the goods and/or services for which it is registered, the mark misleads the public as to the nature, quality or geographical origin of such goods and/or services.

If grounds for revocation exist with respect to part of the goods and/or services for which the trademark is registered, the trademark shall be revoked partially with respect to those goods and/or services only.

A trademark registration that has been revoked by a court decision becomes revoked from the date such decision on revocation becomes final.

Invalidation of a trademark registration

The court can declare a trademark registration invalid in proceedings initiated upon a claim filed by a third party if the mark has been registered in breach of the provisions of the Industrial Property Law, that is, if the trademark application should have been refused registration on absolute or relative grounds for refusal.

However, if a mark, which at the date of filing of the application was non-distinctive, descriptive, or common in the trade for the goods and/or services it was applied for, acquires a distinctive character through use after its registration, such mark cannot be declared invalid. However, the priority date of the mark shall be shifted to the date when the mark acquired its distinctiveness.

A mark cannot be declared invalid on the ground that there is an earlier conflicting registration if use of the latter mark cannot be proven according to the procedure prescribed by the Industrial Property Law.

Where grounds for invalidation of a mark exist with respect to part of the goods and/or services for which the trademark is registered, the trademark shall be invalidated partially with respect to those goods and/or services only.

Removal of Trademark for Non-Use

See Post-Registration, Cancellation of Registration, Actions by Court, Revocation of a Trademark Registration

Assignments

Rights to Assign

The ALPTO shall register an assignment of a trademark registration upon a request filed by either the assignor or assignee of the mark. A trademark holder is authorized to assign its trademark to a third party with respect to all or part of the goods and/or services for which the trademark is registered. The rights to the mark can be assigned with or without transfer of the business. The assignment of the mark has no legal effect if it is not registered with the ALPTO.

Legal Documents

To record the trademark assignment, the following documents should be filed with the ALPTO by any of the parties to the assignment agreement:

• Request for recordal of the assignment of the mark (form FM3);
• Assignment agreement that should have the form of a notary act;
• Payment receipt confirming payment of the respective official fee;
• Power of Attorney (where the request for recordal of the assignment is submitted by a representative of the Assignor or Assignee).

Recordation of Assignment

The ALPTO examines whether the request for recordal of an assignment meets the formal requirements as prescribed by the Trademark Regulations. If the request for recordal of an assignment contains any deficiencies or any of the documents that should be filed together with the request are missing or contain deficiencies, the ALPTO will notify the applicant to remedy the deficiencies within a period of three months.

If the request for recordal of the assignment meets the requirements of the Trademark Regulations or the deficiencies in the request or any of the documents that are filed together with the request are remedied within the given term, the ALPTO will register the assignment in the State Trademark Register and notify the applicant about registration of the assignment within six months of the date of filing of the request or within six months of the date the respective deficiencies were remedied by the applicant, as the case may be.

The ALPTO publishes the information about recordal of an assignment of a trademark registration in the Industrial Property Bulletin.

If during examination of the request for recordal of the assignment the ALPTO finds that the assignment of the trademark is likely to mislead the public as to the nature, quality or geographical origin of the goods and/or services with respect to which the trademark is registered/applied for, the ALPTO shall refuse recordal of the trademark assignment.

Licensees or Registered Users

Right to Grant Use

The owner of the mark is entitled to grant use of the mark under a license agreement to any third party with respect to all or part of the goods and/or services for which the trademark is registered. A license can be exclusive or non-exclusive.

Rights of the Licensor

The owner of the licensed mark can exercise the rights granted to him or her with the registration of the mark against a licensee that violates the provisions of the license agreement regarding the term of the license, the form in which the mark can be used, the goods and/or services for which the mark can be used, the territory of the license and the quality of the products produced or the services rendered by the licensee.

Rights of the Licensee

Without prejudice to the provisions of the license agreement, the licensee may bring proceedings for infringement of the mark only if the licensor consents thereto. However, an exclusive licensee shall be entitled to initiate proceedings against an infringer of the trademark rights if, upon receipt of the respective notification, the owner of the mark does not bring infringement proceedings within a reasonable period of time.

A licensee shall, for the purpose of receiving compensation for damages caused by infringement of the trademark, be entitled to intervene in any infringement proceedings brought by the licensor.

Legal Documents

For the purpose of registration of a trademark license, the following should be filed with the ALPTO by any of the parties to the license agreement:

• Request for registration of the license agreement (form FM4);
• Trademark License Agreement signed by the Licensor and Licensee;
• Payment receipt confirming payment of the respective official fee;
• Power of Attorney (where the request for registration of the trademark license is submitted by a representative of the Licensor or Licensee).

A license agreement shall not be considered valid unless it contains provisions regarding the term of the license, the form in which the mark can be used by the licensee, the goods and services for which the mark can be used, the territory of the license and a quality control provision.

Recordation of License

The ALPTO examines whether the request for registration of a license agreement meets the formal requirements as prescribed by the Trademark Regulations. If the request for registration of a license contains any deficiencies or any of the documents that should be filed together with the request are missing or contain deficiencies, the ALPTO shall notify the applicant to remedy the deficiencies within a period of three months.

If the request for registration of the license meets the requirements of the Trademark Regulations or if the deficiencies in the request or any of the documents that are filed together with the request are remedied within the given term, the ALPTO will register the license agreement in the State Trademark Register and notify the applicant about registration of the license within six months of the date the request met all requirements.

The information about registration of a trademark license is published by the ALPTO in the Industrial Property Bulletin.

RESOURCES

Government Offices

The General Directorate of Patents and Trademarks (the ALPTO)

Blloku Vasil Shanto

Rruga Viktor Eftimiu,

(Godina 5-katëshe e Ish Institutit te Energjetikës)

Kati i katërt,

Tirana, Albania

E-mail: mailinf@alpto.gov.al

Ministry of Economy, Trade and Energy of the Republic of Albania

Address: Blvd “Deshmoret e Kombit“

Tirana 1001

Albania

Tel/Fax: +355 4 223 119

Office of the Minister: Tel: + 355 4 222 7617

E-mail: kabineti@mete.gov.al

Publications

Industrial Property Bulletin

Websites

The General Directorate of Patents and Trademarks (the ALPTO)

Ministry of Economy, Trade and Energy of the Republic of Albania

Industrial Property Law of the Republic of Albania

Legislation of the Republic of Albania on Industrial Property Rights

The Regulations for the Registration of Trade and Service Marks (in Albanian only)

PETOŠEVIĆ

COUNTRY FACTS

Location

Montenegro is a country located in Southeastern Europe. It has a coastline on the Adriatic Sea to the southwest 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 southeast.

Major Cities

Podgorica (capital), Cetinje, Nikšić, Bijelo Polje, Pljevlja, Budva

Government

Parliamentary democracy

Legal System

Civil law

Currency

EURO (EUR)

Est. GDP

US$ 3.884 billion (2010 est.)

Real GDP growth rate: 1.8% (2010 est.)

Per capita: $10,432 International Dollars (2010 est.)

Economic Sectors

Tourism, real estate, agriculture, wood

International IP Agreements

• WIPO Convention
• Paris Convention
• Madrid Agreement and the Protocol

Applicable Classification

• International Classification (Nice)
• Multiple-class registration available

Home Registration

Not required

Right to Trademark

First to file

Duration of Protection

Initial Period: 10 years from the application date

Renewal Period: 10 years

Registration Priority

Paris Convention priority available

OVERVIEW: POLICIES AND TRENDS

Trade and Regulatory Climate

As all other former Yugoslav republics, Montenegro also had difficult times during the wars in the Balkans in the 1990s. The trade and regulatory climate were negatively affected and only started to improve at the beginning of this century. After the final dissolution of Yugoslavia, that is, the State Union of Serbia and Montenegro in June 2006, Montenegro started to attract foreign direct investments, particularly in the tourism sector in the coastal region. There was significant growth in the construction industry too. Montenegro privatized its large aluminum industry, as well as most of its financial sector. Foreign investments are very important for the country’s economy, which is why the Government is imposing changes that are resulting in liberalization of trade and services. Recently, Montenegro attained the status of an EU candidate country, which is expected to help in attracting foreign investments. In the field of intellectual property, Montenegro did not have the complete infrastructure for protecting IP rights until recently. With the opening of the local Intellectual Property Office in May 2008 and the adoption of the most important IP laws, the legal and institutional frame started to be established.

Why Register Locally?

National registration provides the broadest possible protection for a trademark. Namely, only the registered owner has the right to exclusive use of a trademark.

The Future

The level of protection of IP rights in Montenegro has continuously improved over the last few years. The new Trademark Law came into force in Montenegro on December 16, 2010. The law is in compliance with the EU practice and it is expected to accelerate the administrative proceedings and increase efficiency in trademark protection overall. However, some regulations and administrative fees relating to the new law are yet to be established.

OVERVIEW: LAWS, RULES, REGULATIONS

Trademark Law of December 2010 (Official Gazette of Montenegro No. 72/2010)

Regulation on Trademark Registration Procedure of July 2005 (Official Gazette of Serbia and Montenegro No. 28/05). This Regulation remains in force until the new regulation relating to trademark protection proceedings, on the basis of the Trademark Law of December 2010, enters into force.

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

REGISTRATION REQUIREMENTS

What is a Mark?

A mark is that which may be graphically represented. A mark may be comprised of words, slogans, letters, numbers, images, drawings, combinations of colors, three-dimensional shapes, combinations of such marks, as well as of graphically presentable musical notes.

Which Marks May be Registered?

Trademark

A trademark used in the course of trade to distinguish goods of one natural or legal person from identical or similar goods of another natural or legal person.

Service Mark

A trademark used in the course of trade to distinguish services of one natural or legal person from identical or similar services of another natural or legal person.

Collective Trademark

A trademark of a legal person representing a certain type of association of manufactures and/or providers of services, which may be used by persons who are members of such association.

Certification Trademark

Certification trademark was abolished in Montenegro on December 16, 2010, when the new Trademark Law came into force.

Colored Trademark

A mark may be comprised of color or combination of colors. A color or combination of colors must have an identifying power and ability to distinguish the goods and services of one person from those of another. A mark consisting of nothing but a single color, in general, does not have the appropriate distinctive features, because the relevant public usually does not perceive a color as a trademark. A color or colors must be specified in the application.

Three-Dimensional Marks

In general, 3-D marks may be registered, provided that they meet the requirement of distinctiveness. However, the registration may not be granted for a mark representing exclusively a form determined by the nature of the goods or a shape of the goods dictated by the desired technical result.

What Cannot Be Registered?

The following marks cannot be registered in Montenegro.

Public Order

A mark that is against public order, morality or public policy.

Generic Mark

A trademark will not be granted for a mark that:

• Designates exclusively indications or data which are used in commerce to designate the type, purpose, time or method of production, quality, price, quantity, weight or other characteristics of the goods and/or services;
• Consists exclusively of indications that became common in spoken language or indications that are adopted in business practice in good faith.

Marks with Unauthorized Content

A mark containing a person’s name, portrait, or a mark infringing copyright or other intellectual property right will not be registered if opposed by a third interested party.

Marks with Prohibited Content

A trademark will not be granted for a mark that represents a national or religious symbol. Furthermore, a trademark will not be granted for a mark that contains official marks or hallmarks of quality control or warranty.

Deceptive Marks

A trademark will not be granted for a mark that may create confusion in commerce in relation to its nature, quality or geographic origin of goods or services.

Opposed Mark

A mark successfully opposed.

Non-Distinguishing Marks

A trademark will not be granted for a mark that contains no distinctive elements.

Well-known Marks

A trademark will not be granted for a mark that cannot be registered in accordance with article 6bis of the Paris Convention.

Who Can Register?

Proprietor or User

Any natural or legal person using a mark or intending to use a mark with respect to goods and/or services related to its business may apply for a trademark registration. Foreign natural and legal persons in Montenegro shall enjoy the same rights with respect to the trademark protection as domestic natural and legal persons if such rights derive from international agreements or from the principle of reciprocity.

Authorized Agent

Foreign natural and legal persons are represented in the proceedings before the competent authority by a natural or legal person registered in the Register of Authorized Agents kept by the competent authority, or by a domestic attorney.

TRADEMARK REGISTER

Where is the Trademark Registered?

Trademark Register

The Intellectual Property Office keeps the Trademark Register and the record of trademark applications. The Trademark Register and applications records are available for public inspection. Extract from the Register and the Validity Certificate will be issued on request by an interested party followed by the proof of payment of the prescribed administrative fee.

Requirement of Distinctiveness

A trademark cannot be granted for a mark without distinctive elements. However, the mark will not be rejected and the trademark cannot be cancelled if distinctiveness is acquired through use.

Requirement of No Conflict

On the basis of an opposition, a trademark will not be granted for a mark identical to an earlier trademark for the same type of goods and/or services. Also, the trademark will not be granted if the relevant public is likely to be confused about the source of a product or service sold using the mark in question.

Exclusive Use Rights

The trademark owner has the exclusive right to use the trademark for marking the goods and services in the course of trade. The trademark owner has the right to prevent third parties from using a mark:

• Identical to his earlier trademark in relation to the goods/services for which the trademark is registered;
• Confusingly similar to his earlier trademark;
• With a certain reputation in Montenegro and if the use of the latter trademark represents unjust use and acquiring of unjust benefit or might harm a distinctive character or the reputation of the mark.

Limitation on Exclusive Use Right

The trademark owner cannot prevent others to use, in accordance with good business practices, its name or address or the indication of the type, quality, quantity, purpose, value, geographical origin, date of production or other characteristics of the goods and/or services. The trademark owner cannot prevent the use of a registered trademark, in cases where its use is necessary to indicate the purpose of the goods or services, in particular in relation to spare parts or tools. The trademark owner cannot prevent another party to use its earlier right that is used in a certain locality in Montenegro if this right is recognized in accordance with the regulations of Montenegro and within the borders of this locality.

Enforcement

An unauthorized use of a trademark in commerce is considered trademark infringement. The trademark owner has the right to request from the court to order the infringer to stop infringement, to request the destruction of the infringing goods and the tools and equipment used for producing the infringing goods and finally to request damages and reimbursement of legal costs and expenses. The trademark owner may also request publication of the court decision at the expense of the infringer. The statute of limitations on trademark infringement is three years from the date the trademark owner found out about the infringement, or five years from the date the infringement first took place, whichever is later.

Validity

The trademark owner must start to use its trademark within five years of the registration of the trademark. If the trademark owner does not start to use the trademark or abandons the use of the trademark in a continuous five-year period, the trademark will be vulnerable to cancellation, for non-use. However, the cancellation of a trademark will not occur automatically, but upon request of an interested party.

INITIAL REGISTRATION

Procedural Timeline

Search and advice

The Trademark Law does not require an availability search of registered marks and pending applications. For the moment it is not possible to conduct a search in Montenegro as the Trademark Register is still being established. However, once available, it will be recommendable to conduct a search, as it provides information on the potential success of an application and therefore enables the applicant to avoid the costs associated with filing an application where the mark is not available. It also enables the applicant to learn whether the applied for mark conflicts with an earlier mark.

Comment: Following the split of the State Union of Serbia and Montenegro, the corresponding regulations in Montenegro prescribed continuous validity of the trademarks registered before the Serbian IPO by May 28, 2008, on the territory of Montenegro, until their renewal due date, without re-registration or payment of any additional fees. However, the new Trademark Law, which entered into force on December 16, 2010, obligates trademark owners to request re-registration of their trademarks in Montenegro, unless a renewal or request for recordal of changes or Certificate of Registration had already been filed before the Montenegro IPO. The law provides a 12-month period for taking this action. This period expires on December 16, 2011. This process will enable the local IPO to establish its Trademark Register within a year’s time, after which we can expect to have trademark search available.

Application and fees

Only one trademark can be applied for in a single application.

Comment: As of December 4, 2006, Montenegro is a party to the Madrid Agreement and the Protocol Concerning the International Registration of Marks, and thus can be designated before the WIPO. For IRs designating Serbia and Montenegro prior to the split of the State Union, continuation of effects to Montenegro should have been requested before WIPO.

Initial Examination

Trademark applications are examined in chronological order. In rare circumstances, the application can be examined in an accelerated proceeding:

• If a court, market inspectorate or customs officials request an accelerated examination;
• On the applicant’s request, if it is necessary to grant registration for attaining union or exhibition priority abroad;
• If, in accordance with other regulations, it is necessary to grant an urgent registration.

The Examiner checks whether the application complies with the formal requirements and in case it does not, the applicant will be invited to fulfill the requirements within 60 days of receipt of the notification.

Response

If the applicant fails to fulfill the formal requirements within the prescribed term, the application will be considered withdrawn. The applicant may request an extension for complying with the formal requirements, which is an additional 60 days.

Examination on absolute grounds

If the Examiner refuses an application on absolute grounds, the applicant will be notified of the same and invited to submit proof about the facts that could affect the final decision of the IPO within 60 days of receipt of the notification.

Publication

If the application meets the formal requirements and successfully passes the examination on absolute grounds, it will be published in the Official Gazette of the IPO for opposition by third parties on relative grounds. Upon publication of the application, any legal or natural person or association can file a notification to the IPO, on absolute grounds for refusal. These persons will not be a party in the proceeding. The Examiner will then re-examine the decision and will decide either to refuse the application on the absolute grounds or will determine that the notification is not grounded.

Opposition

An opposition can be submitted within 90 days of the publication in the Official Gazette of the IPO. The opposition term cannot be extended. The Examiner will review the formal requirements, that is, whether the opposition was filed by an authorized person and within the prescribed timeframe. If the said requirements were met, the Examiner will notify the Applicant of the opposition and invite the Applicant to respond within 60 days of receipt of the notification. If the Applicant responds to the opposition within the prescribed timeframe, the Examiner will consider the arguments of both sides. The Applicant may request from the Opponent to show that the Opponent used the mark in question in the five years prior to the publication of the application. Finally, the Examiner can decide to either grant the registration or can find the opposition grounded and refuse registration partly, for some goods or services, or in general.

Amendment

The application can be divided into two or more trademark applications by dividing the list of goods/services any time prior to the trademark being entered into the Trademark Register,. Divided applications maintain the filing and priority dates. However, the application cannot be subsequently amended to allow for substantial change of the appearance of the mark or expansion of the list of goods/services.

Registration

If an opposition was not filed against the trademark application or the same was refused, the Examiner will invite the applicant to pay the registration and publication fees and the fees for maintenance of the trademark for the first ten years of protection within 60 days of receipt of the invitation. The date of issuance of the Registration Certificate is considered as the registration date.

Average Completion Times

REGISTRATION FORMS

Information Checklist

The Applicant

• Applicant’s full name and address

The Mark

• Indication of the type of mark
• Representation of the mark
• Color or color combination
• Classes according to the International Classification and the list of goods/services
• The priority

Agents and Service

• Name, address and telephone number of the agent

The following are the initial application documents. They constitute the minimal requirements for filing an application in the practice of the local IPO:

• Application for Registration of Trademarks
• List of goods/services
• Proof of payment of application fee
• Power of Attorney (can be filed subsequently)
• Priority document if priority is claimed (can be filed subsequently)

Application for Registration of Trademark

Use of Form

The form must be filled out in Montenegrin language.

Information Required

The information is given in the order as it appears on the application form.

• Full name and address of the applicant
• Full name, address and telephone number of representative

Comment: For the time being only a domestic attorney can represent foreign applicants. However, the IP laws prescribe the establishment of a Register of Trademarks and Patents agents. The same laws also prescribe the formal requirements for applying for Registered Trademark and Patent agent. It is expected that the IPO will organize an exam for registered agents. We are yet to be informed when this will take place.

• Data on the joint applicant if there is more than one applicant
• Indication of the type of mark
• Representation of the mark
• Color or color combination
• Transliteration of the mark
• Description of the mark
• Classes according to the International Classification
• The international priority
• Disclaimer statement

Comment: The applicant places an indication in this field in case he requires no exclusive rights on non-distinctive elements of the mark.

• The amounts of the government fees

Attachments to Form

• Representation of the mark
• List of goods/services
• Government fee payment slip
• Power of Attorney
• Priority document

The application form can also be downloaded from the IPO site

POST-REGISTRATION

Renewal of Registration

Duration of Protection

The trademark is valid for ten years from the application date. This period may be extended an unlimited number of times, provided that the renewal fees are timely paid.

Renewal Before Expiration

The trademark can be renewed six months prior to the expiration of the renewal term.

Renewal After Expiration

The trademark can also be renewed within six months of the expiration of the trademark. In this case, an additional fee is charged, i.e., the standard renewal fee is doubled.

Reinstatement

A trademark holder who, for justified reasons and despite due diligence, failed to perform a certain action, may request “restitutio in integrum” if this failure resulted in loss of right. This request must be filed within 60 days of termination of the reasons that caused failure in performance of the due action. The request for “restitutio in integrum” cannot be filed after one year of expiration of the term for completing a necessary action.

Amendment

Action by Registrar during Application Stage

The application cannot be substantially amended with respect to the appearance of the mark nor can the list of goods and services be expanded subsequently. The corrections of typographic errors in the name and address of the applicant or errors in the list of goods and services can be done if requested by the applicant or “ex officio”.

Action by Registrar at Request of Owner

Change of name and/or address of the owner or changes in the list of goods and services will be recorded upon request of the trademark holder. The changes recorded in the Register will be published in the Official Gazette of the IPO.

Cancellation of Registration

Revocation Action

Any legal or natural person can file an action for revocation of a trademark before the competent court. A revocation action is filed if the trademark was registered contrary to Article 6 of the Trademark Law of Montenegro, i.e. if the trademark registration should have been refused on absolute grounds. A registration can be revoked partially or entirely. The court delivers its decision on revocation to the IPO.

Cancellation Action

Any legal or natural person may file a cancellation action before the competent court, requesting removal of a trademark from the Register for the following reasons:

• If the trademark application was filed in bad faith;
• If the trademark registration should have been refused on relative grounds;
• If the trademark became a generic term in trade for goods/services, subject to its registration;
• If the use of the mark misleads the relevant public in relation to the type, quality or geographic origin of the goods/services.

A cancellation action cannot be filed after the expiration of the five-year period of registration of the trademark, unless the trademark was applied for in bad faith. The Registrar will remove the trademark from the Register upon receipt of the final court decision.

Contestation of Trademark Registration

Any legal or natural person can file an action to contest a trademark registration. The plaintiff must prove that the mark in question was used in commerce to distinguish the plaintiff’s goods/services before the defendant registered the trademark, and that the mark was well-known. If the defendant proves that he too used the mark before its registration for the same period as the plaintiff, or longer, the court will reject the lawsuit. If the court rules in favor of the plaintiff, the Registrar will enter him as the trademark owner into the Register upon receipt of the final court decision. This action may be filed within five years of the registration date.

Removal of Trademark for Non-Use

Grounds for Removal

The competent court may issue a decision on removal of a trademark if the trademark owner or the person authorized by the trademark owner fail, without justified reason, to genuinely use the trademark on the national market for marking the goods/services listed in the registration.

Removal Period

Non-use in a continuous five-year period from the registration date or from the date of the last use of the trademark makes the same vulnerable to cancellation requests.

Removal and Restoration

The court will not issue a decision on the trademark removal from the Registrar if the use of the trademark began or was continued after the expiry of the five-year period of non-use of the registered trademark and before submission of the request for the removal of the trademark due to its non-use, unless the trademark owner started to use or continued to use the trademark after becoming aware that a request for removal of the trademark in question would be submitted and if the use began or was continued within three months before the request for removal was filed.

Assignments

Right to Assign

A trademark holder may assign a trademark with respect to some or all of the goods or services in the registration. If the trademark is assigned for only some and not all the goods or services, subject to trademark registration, a division of the trademark must be done.
Namely, a trademark registered for goods/services classified in several classes may be divided into two or more trademarks in relation to the goods/services. The divided trademarks are assigned new trademark numbers, but they keep all the rights from the initial registration.

Recordation of Assignment

A trademark assignment is recorded in the Trademarks Register and is published in the Official Gazette of the IPO.

Legal Documents

The request for recordal of an assignment must be supported with the Assignment Deed and the Power of Attorney. The recordal for several trademarks can be applied for with a single request, provided that the Assignor and the Assignee are the same for each of the trademarks.

Licensees or Registered Users

Right to Grant Use

The trademark owner has the right to grant a license for some or all of the goods or services, subject to its registration. A trademark cannot be subject to compulsory license. The use of the trademark by the licensee is regarded as use by the trademark owner. A collective trademark cannot be subject to a trademark license.

Rights of the Trademark Owner

The trademark owner has the right to oppose any use of the trademark that is contrary to the license agreement.

Recordation of License

The trademark owner or the licensee can request recordal of the license. The trademark license is recorded in the Trademarks Register and published in the Official Gazette of the IPO.

RESOURCES

Government Offices

Intellectual Property Office of Montenegro

Bulevar Revolucije 9

81000 Podgorica

Montenegro

tel: +382 20 246 499

fax: +382 20 246 496

E-mail

Ministry of Economy of Montenegro

Rimski Trg 46

81000 Podgorica

Montenegro

tel: +382 20 234 287

fax: +382 20 234 027

Websites

Trademark Law of December 2010

Regulation on trademark registration procedure of July 2005

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

COUNTRY FACTS

Location

Macedonia is located in the central part of the Balkans, bordering Greece to the south, Bulgaria to the east, Serbia and Kosovo to the north, and Albania to the west.

Major Cities

Skopje (capital), Kumanovo, Bitola, Tetovo, Prilep, Strumica

Government

Parliamentary Democracy

Legal System

Civil law

Currency

Denar (MKD)

Est. GDP

GDP: $9.580 billion (2010 est.)

GDP per capita: $4.633 (2010 est.)

GDP (PPP): $9.350 (2010 est.)

Economic Sectors

(In 2008)

44% services;

25.8% industry;

10% agriculture;

20.2% other sectors

International IP Agreements

• Madrid Agreement;
• Madrid Protocol;
• Nice Agreement;
• Paris Convention;
• Singapore Treaty;
• Vienna Agreement;
• WIPO Convention;
• TRIPS Agreement.

Applicable Classification

• Nice Classification – 9th edition;
• Vienna Classification – applicable as of May 26, 2010.

Home Registration

No requirement

Right to Trademark

First to file

Duration of Protection

10 years from the application date

Renewal Period

• 10 years from the date of expiration of the last registration;
• 9 months grace period for late renewal

Registration Priority

• Paris convention priority available
• Exhibition priority available

OVERVIEW: POLICIES AND TRENDS

Trade and Regulatory Climate

Macedonia is one of the smallest economies in the world. The local economy consists mostly of small and medium enterprises in the service and manufacture sectors. The manufacture industry is mostly oriented towards textile and food production and processing. Relatively rapid development is also noted in significant sectors, such as tourism, education and finances. As a young and growing economy, the country offers opportunities to investors. However, the national legislation, which is sometimes outdated or inconsistent, clouds the country’s image. If we add to this the bureaucratic procedures and the relatively high level of corruption, it is understandable why big foreign investors bypass the country.

The country invests efforts in its EU accession bid. EU membership is a big driving force for the reform process. In year 2005 Macedonia attained the status of an EU candidate country, while in year 2009 the European Commission recommended that accession negotiations be opened. This creates positive change for the future development of the country. Macedonia is slowly harmonizing its national legislation with that of the EU, which will enable the country to attract more foreign investors and gradually develop its economy.

With regards to the intellectual property legislation, the country has fully harmonized its legislation with that of the EU, as well as the relevant international conventions. Foreign right owners have been completely equalized with national right owners. The negative aspect is that, although the legislation is in place, it lacks strict enforcement.

Why Register Locally?

The owner of a registered trademark has exclusive right to use the mark in trade. To be legally protected in Macedonia, a mark needs to be registered or be commonly and generally known in the trade as distinguishing the goods or services of its owner from those of others. Many globally recognized trademarks are not present in Macedonia. Therefore, if brand owners do not apply for local IP protection, they will not be able to enforce their rights.

The Future

Being a candidate country for EU membership, Macedonia is rapidly changing the relevant laws in the IP field to meet the requirements provided by the European legislation.

OVERVIEW: LAWS, RULES, REGULATIONS

Law on Industrial Property, O.J. 21 from February 17, 2009

Regulations for Trademarks, O.J. 92 from July 24, 2009

Law on Customs Measures for Protection of Intellectual Property Rights, O.J. 38 from 2005 and amendments, O.J. 107 from 2007

Book of Rules for Law on Customs Measures for Protection of Intellectual Property Rights, O.J. 58 from 2005

REGISTRATION REQUIREMENTS

What is a Mark?

A mark is a sign that can be graphically presented and distinguishes the goods or services of its owner from goods and services of others .

Which Marks May be Registered?

Trademark for Goods

A trademark must be applied for use and registration of a specified list of goods according to the Nice Classification. Trademarks applied in class headings are acceptable as well.

Trademark for Services (Service Mark)

A trademark must be applied for use and registration of a specified list of services according to the Nice Classification. Trademarks applied in class headings are acceptable as well.

Associated Trademark

Associated trademarks have never existed in this jurisdiction.

Collective Trademark

A collective trademark represents a mark intended for collective marking of the goods and services of an organization or other association of natural or legal entities .

Certification Trademark

A certification trademark is a mark used by a couple of entities under surveillance of the owner of the certification trademark. The certification trademark is used for protection of the quality, production or other common characteristics of the goods and services bearing that trademark .

Colored Trademark

Colored trademarks are available. The applicant can claim colors at filing, in accordance with the mark presentation.

What Cannot be Registered?

A trademark cannot be registered in Macedonia if the following absolute grounds exist:

Marks That Are Immoral or Contrary to the Public Order

Trademarks whose publication or use is considered contrary to the public order or morality cannot be registered.

Graphical Presentation

Trademarks that cannot be graphically presented cannot be registered.

Deceptively or Confusingly Similar Marks

Trademarks that are not distinctive and which can easily cause confusion with goods or services of another person on the market cannot be registered.

Generic Marks

Trademarks that have become generic in everyday speech or in the trade for marking certain type of goods or services cannot be registered.

Nominative or Descriptive Marks

Trademarks consisting exclusively of a shape defined by the kind of goods, a shape of the goods necessary to obtain a specific technical result, or a shape giving a substantial value to the goods;

Trademarks whose appearance can create confusion in trade and mislead the average consumer particularly as to the geographical origin, kind, quality or any other characteristic of the goods or services.

Misleading Trademarks

Trademarks that contain or consist of a geographic sign that serves to signify wines or other strong alcohoholic drinks if the reported sign refers to wines or alcoholic drinks that are not from that geographical area cannot be registered.

Marks with Unauthorized Content

Trademark protection will not be granted to the following marks:

• Marks that contain a seal, official sign or hallmark for control and guarantee of the quality, and imitations thereof;
• Marks that contain a national coat of arms or other public coat of arms, flag or emblem, name or abbreviated name of a country or an international organization, as well as imitations thereof, according to Article 6-ter of the Paris Convention, except with authorization from the competent authority of the country or organization;
• Marks that contain the name or abbreviation thereof, the coat of arms, flag, emblem or other official symbol of the Republic of Macedonia, as well as their imitations, except with authorization from a competent state administrative body;
• Marks that contain or imitate a figure or name of a historical or deceased eminent person from the Republic of Macedonia, except with authorization from a competent state administrative body;
• Marks that contain or imitate a name, shape or other recognisable part of protected cultural heritage of the Republic of Macedonia, except with authorization from a competent state administrative body;
• Marks that contain religious symbols or imitations thereof.

Who Can Register?

Every natural or legal entity providing goods or services is allowed to register a trademark in respect of those goods or services.

Authorized Agent

Foreign natural or legal entities must be represented by a nationally registered trademark and patent representative in order to be able to exercise their rights. For prosecution of a trademark before the IP Office, it is enough for the representative to be a registered trademark and patent agent. For representation before the courts, an attorney at law is required to be appointed. It is highly advisable that the attorney at law also be a trademark and patent agent or be otherwise involved in IP matters.

Joint Owners or Users

Joint ownership and use of a trademark is possible as regulated by the general provisions of the Property Law.

TRADEMARK REGISTER

Where is the Trademark Registered?

Trademark Register

Any natural or legal person may apply for trademark registration before the State Office for Industrial Property (SOIP) of the Republic of Macedonia. Information on unpublished trademarks is available upon request, followed by payment of a prescribed fee. Published trademark applications are available to the general public via an official gazette.

Requirement of Distinctiveness

A trademark is distinctive if it gives a special distinctive character to the selected goods and services, compared to similar goods and services.

For distinctive character to be determined, all circumstances are important, in particular, duration and the scope of use .

Exclusive Use Rights

The trademark owner has the exclusive right to use the trademark for marking its own goods or services. It has the right to use the symbol ® next to the trademark. The trademark owner has the right to prohibit use of a mark that is:

• Identical to his trademark for identical goods or services;
• Identical or similar to his trademark for identical or similar goods or services if that similarity can cause confusion to the average consumers, including the possibility of association between the trademarks;
• Identical or similar to his trademark and is used for different goods or services, if the trademark has repute in the Republic of Macedonia and if the use of that mark without justified reason can lead to unfair competition and damage the distinctive character or reputation of the trademark.

Limitation on Exclusive Use Rights

The trademark shall not entitle the owner to prohibit third right-owners to use in trade their name, surname, sign or trade name, address, indications of the kind, quality, quantity, purpose, value, geographical origin, date of production of the goods or rendering of the services or any other characteristic of the goods, irrespective of the fact that those indications are identical with or similar to the trademark or parts thereof, provided that they are used in compliance with the good business practices and do not lead to unfair market competition.

The trademark shall not entitle its owner to prohibit third right-owners from using in trade a sign which is identical with or similar to a trademark if that is necessary for indicating the purpose of the goods, particularly the spare parts thereof, or the kind of services rendered if the sign is used in compliance with the good trade practices and does not lead to unfair competition.

The owner of a prior trademark right shall not have the right to require cancellation of a later trademark on the basis of owner’s earlier priority right, nor to prohibit use of the later trademark in relation to the goods or services for which the later trademark has been used, if the owner had acquiesced to this use for five consecutive years, unless the later trademark was protected in bad faith. The owner of a trademark with later priority right shall not have the right to prohibit another right owner from using an earlier registered trademark.

The owner of a trademark shall not have the right to prohibit the use of a trademark for marking goods or services that are put on the domestic market by himself or with his consent, unless there have been essential changes in the goods, deterioration of their characteristics or change in the nature of the goods or services after they are placed on the market.

If the listing of a registered trademark in dictionaries, encyclopedia or similar publications creates an impression that it is a generic name of the products or services for which the trademark was registered, the editor of the publication shall, on request of the trademark-owner, accompany the listing of the trademark in the first following edition of the publication by an indication that the trademark has been registered.

Validity

A registered trademark is valid 10 years from the date of filing the trademark application. All registered trademarks may be renewed an indefinite number of times for 10-year terms. The renewal request along with the corresponding renewal fees can be submitted with the SOIP during the 10th year, or during the grace period of 9 months after the expiration date. The new period of protection continues after the day of expiration of the previous 10-year protection. The Law on Industrial Property from year 2009 introduced the possibility for trademarks to be renewed for a limited list of goods and services. In case the renewal fees are paid only for a limited list of good and services, the validity of the trademark will be renewed only for the limited goods and services provided in the renewal request.

Enforcement

Enforcement of trademark rights in Macedonia is possible before the Customs Administration, the State Market Inspectorate and the courts. The enforcement procedure before the Customs and the State Market Inspectorate is short and efficient, but only in cases of “obvious” trademark infringement. More complicated cases are usually resolved through negotiations or are brought before the Court. However, the procedure before the courts is generally long and can be relatively expensive.

The right owner, among other things, has the right to demand from the infringer to refrain from future infringement, he can demand damages, destruction of the infringing products or removal of the infringing signs.

INITIAL REGISTRATION

Procedural Timeline

Search and advice

The law does not require a search of prior applied for and registered trademarks as a formal requirement for trademark application. However, an availability search is highly advisable before applying for a trademark registration in Macedonia. A search will provide information on published and unpublished trademark applications, as well as registered trademarks that are considered similar to the new trademark. By conducting an availability search, the applicant will receive information on prior trademarks that can further oppose the new trademark application, and then request further advice. The complete availability search can be obtained for 5-10 working days.

Comment: Macedonia adopted the Vienna Convention on figurative trademarks on February 26, 2010, applicable as of May 26, 2010. All figurative trademarks registered prior to this date are not classified according to the Vienna Classification. Consequently the search results for national figurative trademarks might not be as accurate as they would have been had the Vienna Classification been applied before. Moreover, the Macedonian SOIP is faced with technical incapacity. The database is not regularly updated, therefore, the search results are often not accurate. Local trademark attorneys are aware of this situation and they pay special attention to this problem, trying to provide the most accurate search reports and opinions as possible.

Application

Trademark applications are filed with the Macedonian State Office for Industrial Property (SOIP). Trademark applications should consist of the applicant’s contact details, the representative’s contact details and a Power of Attorney, trademark representation (and color claims, if any), classes and the list of goods and services, the corresponding fees, and information on the priority (if claimed). Only one application per mark is allowed .

Trademark applications according to the Madrid Agreement and the Protocol to the Madrid Agreement Concerning the International Registration of the Marks are also possible .

Comment: Complementary to this, the application for International Trademark designating Macedonia filed in any of the contracting parties according to the Madrid Agreement and the Protocol to the Madrid Agreement Concerning the International Registration of the Marks will be valid in Macedonia provided that registration requirements are met.

Formal Examination

The Macedonian IPO examines the application with respect to the formal requirements. The examiner determines whether all required documents are filed along with the application. Two situations are possible:

• If essential trademark data that is part of the formal requirements are missing, the IP Office will invite the applicant to correct the application within 30 days. The date of filing the corrected application will be considered as a new filing date;
• If other formal requirements are missing, such as a PoA or payment of a filing fee, the IP Office will invite the applicant to submit the missing documents/fees within the prescribed time limit that cannot be longer than 60 days. This deadline is extendable for 60 days at most.

If all formal requirements are met, the examiner proceeds to exam the application on absolute grounds.

Provisional refusal

If the examiner establishes existence of any of the absolute grounds for refusal of a trademark, a provisional refusal will be issued and the applicant will be invited to respond to the provisional refusal within the given period of time. This time limit can be extended up to six months, for justified reasons.

Publication of trademark application

If all formal requirements are met or the response to the provisional refusal is successful, the IP Office will invite the applicant within 15 days to pay the publication fees. If the publication fees are timely paid, the trademark application will be published in the Official IPO Gazette within the next 90 days.

Third party observations

After the trademark application is published, all interested third parties can file observations with the IPO, stating their reasons and arguments for existence of absolute grounds for trademark refusal. Before adopting a decision, the IPO is obliged to forward these observations to the applicant of the published trademark application so that the applicant can respond to the observation.

Oppositions

Oppositions may be filed with the SOIP within 90 days of the publication date. A separate opposition for each application has to be filed.

The following parties can file oppositions:

• Applicant/owner of an earlier trademark application/registration;
• Owner of the trademark registered in a member country of the Paris Union or WTO, for which the local representative filed an application without the owner’s consent;
• Natural person with a name/surname that is same/similar to the published mark;
• Owner of an earlier protected industrial property right, if the subject matter of that right is identical or similar to the published mark;
• Any person having copyright on the work that is identical or similar to the published mark.

An opposed trademark application will be rejected if the following relative grounds exist:

• The published trademark application is identical to an earlier trademark application/registration of another applicant/owner designating identical goods or services;
• The published trademark application is identical or similar to an earlier trademark application/registration of another applicant/owner designating the same or similar goods or services, which would create confusion to the average consumers, including the possibility of association with the earlier trademark application/registration;
• The published trademark application is identical or similar to an earlier registered trademark by another owner, for goods or services which are not identical or similar to the goods or services of the trademark application, if the earlier registered trademark has reputation in the Republic of Macedonia and if the use of the later trademark application, without justified reason, would represent unfair competition or will harm the distinctive character or reputation of the earlier trademark;
• The published trademark application is indeed a trademark registered in a member country of the Paris Union or WTO, and was filed by a local representative without the owner’s consent;
• The published trademark application is identical or similar to a natural person’s name and surname;
• The published trademark application is identical or similar to an earlier protected industrial property right;
• The published trademark application is identical or similar to an earlier copyrighted work.

Comment: The term “earlier trademark” comprises :

1. Earlier filed or registered trademarks;
2. Trademarks enjoying exhibition and Union priority;
3. Earlier internationally registered trademarks with effect in the Republic of Macedonia;
4. Trademarks which, at the time the later trademark application was filed, were already well-known in the Republic of Macedonia within the meaning of Article 6-bis of the Paris Convention or Article 16(3) from the TRIPS Agreement.

Examination of opposition and time frame

If all formal requirements for filing the opposition are met, the SOIP will deliver the opposition to the applicant of the trademark subject to the opposition and will invite the applicant to submit a response within 60 days.

If the applicant does not respond, SOIP will decide within the boundaries of the grounds specified in the opposition. If a response is filed, SOIP will take into consideration the arguments of both parties.

It usually takes 24-36 months for the SOIP to adopt a decision on the opposition notice.

Registration

If no opposition is filed or the opposition is rejected, SOIP will invite the applicant of the trademark to pay the registration fees within a period of 30 days. Registration fees include fees for 10-year maintenance, publication fees, and fees for issuance of the Certificate for Registration.

Practice shows that Certificates of Registration are not issued on a regular basis, for reasons not known to the public. However, the Grant Decision that is always delivered to the trademark owner is deemed as legitimate evidence for the trademark registration.

Average Processing Times

The average processing time, from filing a trademark application until registration, in a straightforward case is 14 -18 months.

This table shows time needed for separate actions that may be taken during the prosecution.

Undertaking any of the actions presented in the table can postpone registration of the trademark for the corresponding additional time needed for completion of the specific action taken.

Government Fee Schedule

1. Fees for searches

2. Fees for trademark prosecution

REGISTRATION FORMS

Information Checklist

The Applicant

• Full name, address, and applicant’s country of residence or incorporation.

The Mark

• Representation of the mark to be registered;
• Colors to be claimed (for device marks);
• Class(es) and list of goods and services;
• If priority is claimed, date, corresponding number and the country of the initial registration or exhibition.

Agents and service

• Name, address, and telephone numbers of Macedonian agent authorized to file;
• Power of Attorney – signed and (in case of corporations) sealed with corporate seal;
• If the applicant is a corporation, the Power of Attorney should include the name and title of the person authorized to sign for the corporation.

Attachments to Form

• Representation of the mark on a separate sheet;
• Government filing fee.

Registration Forms

Power of Attorney form

There is no specific and unified Power of Attorney form in use. Agents are free to modify the Power of Attorney forms depending on the specific case. The formal requirement is that the Power of Attorney be a separate document, signed by the applicant. In case of corporations, the Power of Attorney should include clear indication of the name and title of the person authorized for signing, as well as a seal of the corporation. No notarization or legalization is required.

Application for Registration of Trademark (Initial Registration Form)

Details for trademark application must be provided in the initial application form in Macedonian language and Cyrillic alphabet. Only the applicant’s name and address can be provided in Latin alphabet.

The application form can be downloaded from the Macedonian SOIP website

Notice of Opposition

There is no specific form for opposition notices.

Request to Amend a Trademark Application or Registration

There is a unified form for recording amendments to trademark applications or registrations. The applicant (or its representative) is given the opportunity to describe the requested amendment to the trademark. The amendments that may be recorded by use of this form are the following: name and address changes; mergers; assignments; licenses; limitations of the classes of goods and services, and similar changes.

Designation of Domestic Representative

A domestic representative has to be designated with the initial application form.

Notice of withdrawal of an Application, Notice or Request

There is no specific form for withdrawal of an Application, Notice or Request.

Payment of Trademark Registration Fee

There is no specific form for payment of a trademark registration fee.

POST-REGISTRATION

Renewal of Registration

Duration of Protection

The initial trademark registration is valid for 10 years from the application date. Each renewal is for a period of 10 years from the expiration of the last registration.

Renewal Before Expiration

The request for trademark renewal must be made within the last year of protection.

Renewal After Expiration

Belated trademark renewals may be requested up to 9 months following the date of expiration of a registration, and additional fees will need to be paid.

Reinstatement

In cases where the trademark owner has failed to renew the trademark on time, SOIP will allow reinstatement if the following conditions are fulfilled:

• A request for reinstatement is submitted followed by the renewal request; and
• All prescribed fees are paid (fees for the reinstatement request and renewal fees).

The reinstatement request can be submitted within two months of the date when the trademark owner was informed about the lapsing of the trademark.

In cases when a trademark is not renewed at no fault of the trademark owner, SOIP will allow restitution if the following conditions are fulfilled:

• A request for restitution is filed followed by the renewal request;
• The circumstances that prevented timely renewal are indicated;
• All prescribed fees are paid (fees for the request for restitution and renewal fees).

The request for restitution can be submitted within three months of the date when the circumstances preventing trademark renewal stopped, or within three months of the date when the trademark owner was informed about the lapsing of the trademark registration. After expiration of one year, a request for restitution cannot be filed.

Advertisement of Renewal

If the formal (and substantial requirements in cases of reinstatement and restitution) requirements for renewal are met, an invitation for payment of the publication fees is sent to the trademark owner. Following the payment of the publication fees, a notification for trademark renewal is published in the Official Gazette of the Macedonian SOIP and a Renewal Decision is issued.

Cancellation of Registration

A trademark registration can be canceled during its validity if it is determined that absolute or relative grounds for rejection of the trademark existed at the time when the trademark was registered. The cancellation request may be initiated ex-officio by SOIP or at the request of an interested party.

Comment: During the examination of a trademark application, SOIP is obliged to examine only the absolute grounds for rejection of a trademark. Thus, based on this provision in the law, it is more likely that SOIP will later initiate a cancellation action on the basis of existence of absolute grounds rather than for existence of relative grounds.

Cancellation of Trademark for Non-Use

The procedure for cancellation of a trademark due to non-use is initiated upon request of an interested party. The burden of proof is on the side of the trademark owner. If the request for cancellation of a trademark due to non-use is accepted, the trademark registration will be cancelled as of the date of the cancellation decision (ex nunc).

A trademark is vulnerable to cancellation for non-use after five years.

Assignments

A right holder can assign its trademark provided that assignment is made in writing and a notary public legalizes the signatures of the contracting parties.

The assignment agreement must clearly state the contracting parties and describe the trademarks that are to be transferred.

The trademark assignment can be recorded with the Macedonian SOIP if the request is filed by the assignor or assignee. If the assignor files the request, it is highly advisable that the assignee appoints a representative before the Macedonian SOIP.

An unregistered assignment agreement will not have a legal effect with respect to third parties.

Licensees or Registered Users

A right holder can license its trademark to other parties provided that a license agreement is made in writing.

The license agreement must clearly describe the trademarks that are to be licensed. Furthermore, the license agreement should state details about the contracting parties, the scope of the license, the validity period, the territory on which the license is valid, etc.

A license can be recorded with the Macedonian SOIP if the request is filed by the licensor or licensee. An unregistered license agreement will not have a legal effect with respect to third parties.

RESOURCES

Government Offices

State Office for Industrial Property of the Republic of Macedonia

Ul. 11 Oktomvri br. 25

1000 Skopje

Macedonia

Tel: +389 2 3103 601

Fax: +389 2 3137 149

Customs Administration of the Republic of Macedonia

Ul. Lazar Licenoski br. 13

1000 Skopje

Macedonia

Tel: +389 2 3116 188

Fax: +389 2 3237 832

Email

Publications

American Chamber of Commerce in Macedonia – Trademark Prosecution Guide

Websites

State Office for Industrial Property of the Republic of Macedonia

Customs Administration of the Republic of Macedonia

American Chamber of Commerce in Macedonia

Disclaimer: THE INFORMATION PRESENTED IN THIS ARTICLE IS PROVIDED “AS-IS” AND WITHOUT WARRANTY OF ANY KIND, EITHER EXPRESSED OR IMPLIED.

Trademark Law had not entered into force until the date of completion of this article. It was expected to enter into force in on January 1, 2011. Accordingly, the practical information, including the fees, procedure and the time frame for the protection of trademark rights in Bosnia could not be given. This information is to be included in the next edition.

COUNTRY FACTS

Location

Bosnia and Herzegovina is a country in Southeastern Europe, bordered by Croatia to the north, west and south, Serbia to the east, Montenegro to the southeast, and 26km of Adriatic Sea coastline to the south.

Major Cities

Sarajevo (capital), Banja Luka, Mostar, Tuzla, Zenica, Bihać

Government

Federal democratic republic

Legal System

Civil code

Language

Bosnian, Serbian, Croatian

Currency

Convertible Mark (BAM)

Est. GDP

$29.5 billion (2009 est.)

Real growth rate: 5.4% (2008 est.)

Per capita (PPP): $6,400 (2009 est.)

Economic Sectors

Agriculture: 9.5%

Industry: 26%

Services: 64.5% (2006 est.)

Source: CIA Factbook

International IP Agreements

• WIPO Convention
• Paris Convention
• Madrid Agreement
• Madrid Protocol

Applicable Classification

• International Classification (Nice)

Home Registration

No requirement

Right to Trademark

First to file

Duration of Protection

Initial Period: 10 years from date of registration

Renewal Period: 10 years

Registration Priority

Paris Convention priority available

OVERVIEW: POLICIES AND TRENDS

Trade and Regulatory Climate

The political changes in the former Soviet Union and the former communist countries in Central and Eastern Europe in the late 1980s and early 1990s brought about a new category of countries: “countries in transition”, to which Bosnia belongs. These countries face the same economic and political challenges. Some of the common challenges include:

• Switching from planned to market economies;
• Major changes in the field of business and economics;
• Change in the political environment;
• Changes in culture and cultural patterns.

Bosnia is a classic example of a country in transition, with all the “childhood illnesses” of a young democratic and business society, further complicated by the complex post-war structure of the country, including 3 dominant ethnicities and the tight shell imposed by the Dayton Peace Agreement.

Accession to the EU is one of the goals that is not disputed by any of the ethnic or political groups in the country. Many steps have been taken on this path, such as ratification of the Stabilization and Association Agreement (SAA), free trade agreements with the neighboring countries, CEFTA, etc.

This certainly will help in the further development of the country and its transition to a full democratic society, as an equal member of the European family.

Why Register Locally?

Legal remedies are available with respect to infringement of unregistered marks. However, due to strict ethno-political and regional division factors, these remedies are at the local government level, are not uniform and often are not sufficient to fight and overcome unauthorized use of one’s unregistered mark.

IP laws are state-level laws, valid throughout Bosnia and Herzegovina. The Court of Bosnia and Herzegovina has competence over all criminal aspects of trademark infringement cases and, generally, more legal remedies are available and more easily enforceable.

Furthermore, Article 49 of the Trademark Law gives the registered owner the right to prohibit third parties from using the mark in trade without his consent in similar or even dissimilar products under certain conditions.

The Future

Bosnia and Herzegovina has begun the process of harmonization of its legislation with the EU legislation, “acquis communitaire”. Following the recent worldwide trend, the earlier Industrial Property Law, as a single law regulating all forms of industrial property, was replaced with a whole set of new laws with legal regulations that are harmonized with the requirements of SAA and TRIPS. We expect that the draft law on customs procedures for protection of IP rights, which was prepared by the Customs and Taxation Authority of Bosnia and Herzegovina, will enter into force in year 2012. This will further enhance the system of protection of all IP rights and will hopefully give a much-needed boost to the national economy and the overall system of IP-rights protection.

REGISTRATION REQUIREMENTS

What Is a Mark?

According to the Trademark Law, a trademark is a mark used in the commerce to identify a particular product and differentiate it from other products. The mark must be graphically presentable and can comprise of words including personal names, designs, letters, numerals, images, shapes of goods or their packaging, color combinations or combinations of all the afore said elements .

Which Marks May Be Registered?

Trademark for Goods

Any mark that is capable by itself of distinguishing the goods of one company from those of other companies.

Trademark for Services

Any mark that is capable by itself of distinguishing the services of one company from those of other companies.

Collective Mark

Any mark may be registered as a collective trademark if it fulfils the trademark registration requirements. It is granted to the associations of producers or service providers and is used by the members thereof.

Certification Mark

Any mark may be registered as a certification trademark if it implies that the goods or services in relation to which it is being used are certified by the proprietor of the mark as to their quality, accuracy or any other feature including their origin or ingredients or, if the mark relates to goods, the method of their production, and if it relates to services, the method of their performance . The use of certification marks is under supervision of the proprietor. However, no party can be restrained from the use of a certification mark as long as it has the necessary characteristics and is used under the general provisions of the certification mark regulation agreed.

Color Marks

Marks in colors and comprising combinations of colors are registrable. Single colors, generally, are not acceptable.

What Cannot Be Registered?

The following cannot be registered as a trademark in Bosnia and Herzegovina.

Absolute Grounds

Marks That Are Immoral or Contrary to Public Policy

A mark or part of a mark will not be registered, or if registered may be declared void, if it is scandalous or any part of it is immoral or contrary to public policy.

Nominative or Descriptive Marks

This group includes:

• Marks That Cannot be Graphically Presented;

Comment: Only marks that can be presented by words including personal names, designs, letters, numerals, images, shapes of goods or their packaging, color combinations or combinations of all the aforesaid elements can be registered. Sounds and scent marks are not registrable.

• Marks that are devoid of any distinctive character;
• Marks that consist exclusively of signs or indications that serve as the designation of the kind, quality, quantity, purpose, value, geographical origin, or time of production of the goods or provision of the services or other characteristics of the goods and/or services;
• Marks that consist exclusively of a shape resulting from the nature of the goods themselves; marks that consist exclusively of a shape necessary to acquire certain technical result; or marks that consist exclusively of a shape that acquires substantial value to the product.

Identical Mark

A mark that is identical to an existing trademark and is proposed for identical goods and/or services cannot be registered. Well–known marks enjoy broader protection. A mark that is identical to a well-known mark in Bosnia and Herzegovina cannot be registered even for different goods and/or services. The law also prohibits transcriptions, transliterations or imitations of well-known marks. The Bosnian PTO does not allow “letters of consent”.

Marks with Prohibited Content

Marks that contain prohibited content:

• Marks of such a kind as to deceive the public in any way, but especially as to the nature, quality or geographical origin of the goods or services;
• Marks that contain state or other public coat of arms, flag or emblem, name or abbreviation of a country or an international organization and imitations thereof, except if used under consent of the competent authority of the state or the organization;
• Marks that contain name or abbreviation, coat of arms, emblem or any other official insignia of Bosnia and Herzegovina, the entities, the cantons, the District or represents an imitation thereof, unless under consent of the competent authorities;
• Marks that represent or imitate national or religious symbols;
• Marks that are usually used for marking wines and contain or comprise of geographical indications for wine; marks for spirits that contain or comprise of geographical indications for spirits;
• Marks that contain or comprise of geographical indications valid in Bosnia and Herzegovina.

Relative Grounds

Similar Marks

This group includes marks that are identical to an earlier trademark for similar goods or services or a similar mark for the goods and/or services that are identical to an earlier trademark registration. Another condition for similarity is likelihood of confusion, that is, a trademark that might confuse the public as to its relation to an existing trademark, because of its identity or similarity with the existing mark and the identity or similarity of the goods or services designated by the two marks.

Marks with Prohibited Content

• Marks that violate an earlier copyright or registered industrial design;
• Marks that are identical or similar to an earlier registration which lapsed (was not renewed), under condition that less than 2 years have passed from the expiry date. This does not apply if the owner of the earlier registration gives specific consent for the registration or if the earlier registered trademark was not used in Bosnia.
• Marks that violate the right to the name of a famous person or any other individual name that existed before the priority/application date;
• Marks registered in bad faith and contrary to the public policy.

Who Can Register?

Natural and artificial persons that handle trademark registration procedures before the PTO of Bosnia and Herzegovina must be duly registered in the Register of Representatives . Foreign natural or artificial persons must be represented by a representative registered in the Register of Representatives. Domestic natural and artificial persons can represent themselves. Natural and artificial persons must meet the prescribed criteria in order to be registered as representatives.

Priority Registration

Priority registration in accordance with the Paris Convention may be claimed if the first application for registration in a Convention country was filed within six months of the national Bosnian application.

TRADEMARK REGISTER

Kinds of Registers

The PTO of Bosnia and Herzegovina maintains three registers, namely:

• Register of Trademark Applications;
• Register of Granted Rights;
• Register of Representatives.

The registers are unified and kept in electronic form. The registers are considered of public interest and are thus available to the public.

Exclusive Rights

Registration of a trademark gives the right holder exclusive rights. The proprietor of a trademark is entitled to prohibit:

• The use of an identical mark by a third party for goods/services that are identical to the ones the trademark is registered for;
• The use of an identical or similar mark for goods/services identical or similar to the goods/services the trademark is registered for, under the condition that such use can cause confusion and false connection of the marks;
• A mark identical or similar to the trademark for goods or services dissimilar to those for which the trademark has been registered, if the trademark enjoys well-known reputation in Bosnia and Herzegovina.

The use mentioned above includes display of the mark on goods or packaging thereof; the offering of goods, trading or possession for trade and the offering or provision of services under the mark; the import, export or transit of goods under the mark and its display on printed materials and advertising. Where a registered trademark is reproduced in a dictionary in a manner that implies it is a generic term, the owner of the trademark may require from the publisher, editor or distributor of the dictionary that a corresponding note be included, at the latest, in a reprint.

Exhaustion of Right

The trademark right shall not entitle the proprietor to prohibit its use in relation to goods that have been put on the market .

Limitation of Exclusive Rights

A trademark right owner cannot prohibit a third person from using an identical or similar mark if the mark represents the trade name or the name of a third person, acquired bona fide before the date of the granted priority of the trademark.

Furthermore, the trademark proprietor cannot prohibit any person from using in the course of trade and in accordance with the principled practices:

• His own name or address;
• Indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services;
• A sign protected by a trademark where its use is necessary to indicate the intended purpose of the goods or services, in particular, where spare parts or accessories are concerned.

A trademark right owner shall not prohibit any other person from using an identical or similar sign to designate goods or services of other kind, unless a well-known trademark is concerned. The holder of a registered well-known trademark may prohibit another person from using an identical or similar sign to designate goods or services, respectively, that are not similar to those for which a trademark is registered if the use of such a sign would indicate a connection between those goods or services and the holder of the protected well-known trademark, and if there is a likelihood that the holder of the well-known trademark would suffer damage by such use.

Acquisition and Validity of a Trademark

A trademark is acquired by its entry in the Register of Trademarks and is valid from the filing date of the application. The trademark validity period is ten years from the filing date of the application and may be extended indefinitely.

INITIAL REGISTRATION

Prescribed procedural steps

Search

This is not mandatory, but it is recommended. Search requests can be filed by an authorized representative, or, in the case of domestic natural and legal persons, personally.

Application

Again, an application can be filed by an authorized representative or personally (for domestic natural and legal persons). Applications must contain the particulars prescribed by the Trademark Law. Minimum requirements necessary to obtain a filing date and serial number are:

• Request filed on the official form;
• Representation of the mark;
• List of goods and services.

Payment of fees, Powers of Attorney filings and any other additional documents can be filed subsequently. Fees can be paid immediately or upon an official action issued by the PTO of Bosnia and Herzegovina.

Action by the Registrar

The Registrar of Trademarks may accept the application, object to it or impose conditions or restrictions (i.e. request a disclaimer letter). Applications are examined only on absolute grounds.

Publication and Opposition

Complete applications are published in the Official Gazette. Interested parties are given a 3-month deadline as of the publication date to file an opposition action. Oppositions must be filed in the prescribed form and include:

• The name and surname or the company name of the opponent and his address or business seat;
• A detailed explanation of all the grounds and evidence on which the opponent bases his objection and by which he proves his status of an interested party;
• All the published data relating to the application against which an objection is being filed, including the number of the application, the name, surname and address, or the company name and business seat of the applicant, and a representation of the sign applied for with a list of goods and services;
• An executed power of attorney, if the objection is filed through a representative.

REGISTRATION FORMS

REQUIRED INFORMATION

Trademark Application Form (English version)

Applicant

Name and address of the Applicant

Mark

• Reproduction of the mark;
• List of goods and services (submitted in a separate document, only the classes are indicated on the filing form);
• Priority date, country and number – if claimed.

Agent

Name, address and assigned agent number have to be provided.

PTO of Bosnia and Herzegovina accepts a signed Power of Attorney, no additional notarization or legalization is required. Applications have to be filed on the below forms in one of the official languages of Bosnia and Herzegovina (Bosnian, Croatian, Serbian).

Renewal Form (English version)

Applicant

Name and address of the Applicant

Mark

• Registration number;
• A statement whether the renewal is requested for all goods and services or only specific goods from the original registration.

Agent

Name, address and assigned agent number have to be provided.

RESOURCES

Government Offices

Institute for Intellectual Property of Bosnia and Herzegovina

Kralja Petra Krešimira IV8a

88000 Mostar

Bosnia & Herzegovina

Tel: +387 36 33 43 81

Fax: +387 36 31 84 20

Email

Publications

Trademark Law (Official Gazette of Bosnia and Herzegovina No. 53/10)