Trademark Practice and Forms Treatise Chapter - Macedonia

Feb 9 2011 - 17:00

Prepared by:
Živka Kostovska — Stojkovska,
PETOŠEVIĆ

OVERVIEW: THE BASICS

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 However, the national legislation, which is sometimes outdated or inconsistent, clouds the country’s image.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

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