New Trademark, Industrial Design and Copyright Laws in Serbia Explained
The new Trademark Law entered into force in Serbia on December 24, 2009, along with three other intellectual property laws: The Law on Protection of Topography of Integrated Circuits, The Law on Protection of Industrial Design, and The Law on Copyrights and Related Rights.
The four new laws aim to bring Serbian IP legislation in line with the laws of the European Union while also establishing legal framework for certain intellectual property office (IPO) practices that were not formally regulated by the previous law.
The new Trademark Law replaced the old Law on Trademarks of the State Union of Serbia and Montenegro, which entered into force on January 1, 2005.
Here are the highlights:
An important novelty incorporated into the new Trademark Law is the possibility to appeal IPO decisions.
Prior to the new law, the IPO decisions were final. The only option was to file an administrative court procedure before the Serbian Supreme Court.
According to the new law, an Appeal Board will be created and interested parties will have 15 days to file their appeals following the IPO decision.
The Serbian Supreme Court will remain as the last possible resort for IP rights holders who will have 30 days to appeal the decision brought down by the new Appeal Board.
The above-mentioned novelty also applies to the Law on Protection of Industrial Design.
According to the new law, persons entitled to protection within Article 6bis of the Paris Convention for Protection of Industrial Property (well-known marks), can exercise their rights before the national IPO, while the previous trademark law directed them to the courts. Namely, the IPO is now responsible for resolving matters concerning those trademarks that have been registered despite the existence of a well-known mark on the Serbian market.
Even though it has been a common IPO practice before the new Law entered into force, the new Law now explicitly stipulates that a mark can be registered based on a written consent signed by the rights holder of the prior confusingly similar (not identical) trademark. The IPO will however retain a discretionary right to reject the registration of two highly similar marks, disregarding the written consent, so as to avoid confusion among consumers. The new Law also prescribes that the IPO may refuse to record an assignment in cases where such assignment could create confusion on the market as to the origin, type, quality or other characteristics of the goods and/or services.
Although previously a common practice, now the law explicitly stipulates that the reclassification of the list of goods/services is allowed during the application process.
Under the new law, the customs authorities are entitled to request the expedited examination of a trademark application. The previous Law gave such authorization only to the courts and the inspectorate authorities. The same also applies to the Law on Protection of Industrial Design.
Although this has been a practice of the IPO, now the new law explicitly regulates that during an examination of a trademark application, the IPO can consider third-party objections, i.e, observation letters, but the third-party will not be considered a part in the proceedings. This action was previously exercised under the provisions of the Law on General Administrative Procedure. Now, it is included in the Trademark Law.
According to the previous law, if a right holder failed to timely renew a trademark, he/she had the right to file for the same trademark within one year after the renewal deadline has expired and, in making its decision, the IPO would not take into consideration any prior confusingly similar or identical marks filed by a third party within the time that the renewal deadline expired and the new application was filed. The new law excludes this provision. In other words, now, in cases where a mark was not renewed, the holder has the right to file a new identical trademark application, but the IPO will cite all confusingly similar filings or registrations recorded in the period between the time that the renewal deadline has expired and the new application was filed.
The new law left out a provision that previously allowed the continuation of a trademark cancellation procedure ex officio if the plaintiff withdraws from the cancellation procedure.
According the new law, preliminary injunction is allowed, provided that the lawsuit is filed within 30 days from the date the court issues the decision on the preliminary injunction. The former law prescribed a shorter deadline of 15 days. This also applies to the Law on Protection of Industrial Design.
The new Law on Legal Protection of Industrial Design replaced the previous law that entered into force on January 1, 2005.
The new law introduces different terminology, i.e. the term “industrial design”, instead of the previous term “right to a design.” The introduction of the term “industrial design” will help distinguish more clearly between the designs intended for industrial production, and designs with solely aesthetic characteristics.
The Law on Copyrights and Related Rights replaced the law that entered into force on December 24, 2004. The most important changes are introduced in relation to collective exercise of copyright and related rights.
Regarding the exercise of copyrights and related rights, the new Law prescribes that any holder of the copyright or related right is authorized to exercise his/her right either individually or collectively except in cases when the collective exercise through a collective organization is obligatory.
According to the new law, copyright collectives will no longer be able to determine their fees unilaterally. Instead, copyright collectives will have to negotiate the fees with the association representing the users of author’s rights or individual users. It was decided that such solution is more just because it takes into consideration the financial situation of the users of authors’ rights.
Should copyright collectives and users of authors rights fail to reach an agreement on the fees, a new body – the Commission for Copyright and Related Rights – will recommend the fees.
The law more comprehensively deals with collective organizations. It requires that collective organizations register in the Register of Associations instead of the Companies Register, citing less formal requirements for the establishment of a collective organization. The new law requires collective organizations to inform the public and the users of authors’ rights about aspects of its work.
The new also proposes that Serbia implements a widely accepted practice throughout Europe of exempting citizens with special needs from having to pay for or require authorization when copying or publishing learning aids necessary for their special needs, in case these learning aids do not exist in an adequate medium to be used by people with disabilities.
Regarding the author’s right to remuneration, the novelty incorporated into the new law is the new list of persons obligated to pay the remuneration to the author, including producers of devices for the sound and visual recording and the producers of blank CDs.
The new law also introduces the Author’s Priority Right of Modification of a Work of Architecture. When the owner of a building intends to make certain alterations to the building, he/she is required to first contact the architect and offer the right to make alterations to such architect first.
The implementing regulations are expected to be passed by April 24, 2010, as the law prescribes that they are passed within four months from the date the Law enters into force.
Source: Serbian IPO, PETOSEVIC
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