Trademark Practice and Forms Treatise Chapter - Montenegro
Jasna Jusic Paovic,
OVERVIEW: THE BASICS
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.
Podgorica (capital), Cetinje, Nikšić, Bijelo Polje, Pljevlja, Budva
US$ 3.884 billion (2010 est.)
Real GDP growth rate: 1.8% (2010 est.)
Per capita: $10,432 International Dollars (2010 est.)
Tourism, real estate, agriculture, wood
International IP Agreements
- WIPO Convention
- Paris Convention
- Madrid Agreement and the Protocol
- International Classification (Nice)
- Multiple-class registration available
Right to Trademark
First to file
Duration of Protection
Initial Period: 10 years from the application date
Renewal Period: 10 years
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 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
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.
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?
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.
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.
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 was abolished in Montenegro on December 16, 2010, when the new Trademark Law came into force.
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.
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.
A mark that is against public order, morality or public policy.
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.
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.
A mark successfully opposed.
A trademark will not be granted for a mark that contains no distinctive elements.
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.
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.
Where is the Trademark Registered?
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
* Applicant’s full name and address
* 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)
Use of Form
The form must be filled out in Montenegrin language.
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
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.
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.
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
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.
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.
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.
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.
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.
Intellectual Property Office of Montenegro
Bulevar Revolucije 9
tel: +382 20 246 499
fax: +382 20 246 496
Rimski Trg 46
tel: +382 20 234 287
fax: +382 20 234 027
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