New Trademark Law in Serbia Brings Significant Changes

Mar 3 2020 - 16:21

A new trademark law entered into force in Serbia on February 1, 2020 introducing important changes that further harmonize the country’s trademark legislation with the corresponding European Union law.

1. Trademark Opposition System Introduced

One of the most important changes brought by the new trademark law is the introduction of the opposition system.

If the application successfully passes the examination on absolute and relative grounds, it will be published in the Serbian IPO’s Official Gazette. Interested parties can file an opposition within three months from the application’s publication date. The deadline for filing oppositions against international registrations is three months from the first day of the month following the date of publication in the WIPO Gazette of International Marks. The Serbian IPO does not publish international trademarks.

Under the previous law, interested parties objecting to the registration of a trademark on absolute and relative grounds could only file a written observation. The IPO was not required to take written observations into consideration, and persons who filed them did not become party to the proceedings. The new law retains the observation system, which will exist alongside the opposition system.

If the parties wish to seek a negotiated settlement, they can request suspension of the proceedings for up to 24 months. Both parties must agree to the cooling-off period.

2. Grounds for Opposition

Oppositions can be based on relative grounds for refusal, which are examined ex officio by the IPO, as they were previously, and on two additional grounds which are not examined ex officio and were previously entirely absent from the law.

One of these is filing of a trademark application by a trademark owner’s agent or representative without the owner’s authorization. Under the previous law, trademark owners could only initiate court proceedings once such trademarks were registered. They could request the court to declare them as applicants or right holders, but this procedure was time-consuming and expensive. Now, trademark owners can prevent the registration of such trademarks altogether in the opposition procedure. If an agent or representative however succeeds in obtaining the registration without the trademark owner’s authorization, the trademark owner can still initiate cancellation proceedings.

The other is similarity of a trademark to an existing company name. Under the new law, the IPO will also refuse an application if opposed by the company whose registered name or its significant part is similar or identical to the applicant’s trademark, and if the goods/services concerned are also similar or identical to each other.

3. Elimination of Graphical Representation Requirement

The graphical representation requirement no longer applies when submitting a trademark application. However, the sign applied for must be represented in a way which enables the competent authorities and the public to clearly determine the subject matter.

4. Right to Prohibit Transit of Goods through Serbia

Trademark holders are now authorized to prohibit the transit of goods infringing their intellectual property rights through Serbia, as well as their storage and transshipment, even if these goods are not intended for the domestic market. The previous Serbian trademark law prohibited the import and export of infringing goods, while the transit, storage, and transshipment of goods were not mentioned. In practice, this was a big problem because counterfeit goods were often transported through Serbia to neighboring countries and customs authorities were required to release goods in transit even if they were proven to infringe IP rights.

5. Comparative Advertising

Trademark owners can now also prohibit the use of their trademark in comparative advertising in a way that is contrary to the Law on Advertising, which sets out specific rules for comparative advertising. For example, the comparison must concern goods/services intended to satisfy the same needs and it must not denigrate the competitor’s trademarks. The previous trademark law did not contain any provisions regarding comparative advertising.

6. Proof of Use in Invalidation Actions

Trademark owners are now authorized to request proof of use of the earlier trademark on which the invalidation action against their trademark is based. Previously, the owner of the earlier trademark was required to prove use in order to request invalidation. Although this provision is now different, it is unlikely that the practice will change.

The new law does not specify when the proprietor should file the proof of use request – together with the first reply to the invalidation action or at a later stage of the proceedings.

7. Non-Use Proceedings

If a trademark is cancelled in non-use cancellation proceedings, the date it ceases to be valid is the cancellation request filing date, and not five years after the date of its registration or last use, as was prescribed under the previous law.

8. IPO’s Decisions Cannot be Appealed

It is not possible to file an appeal against the IPO’s decisions – these decisions are final. Instead, parties can initiate administrative proceedings before the Administrative Court. Under the previous law, the IPO’s decisions could be appealed before the Administrative Commission of the Serbian Government.

9. International Exhaustion of Rights

Trademark owners cannot prohibit the importation of genuine goods bearing their trademarks after the goods have been put on the market anywhere in the world by the trademark owners themselves or with their consent. In principle, this means that, prima facie, parallel imports are now lawful and permissible. This change seems to be a step back – the previous version of the law did not allow parallel imports. It remains to be seen how this will be interpreted by courts.

10. Infringement Actions in the Name of Licensees

Unless otherwise stipulated by the license agreement, the holder of an exclusive license is entitled to file an infringement action if they notified the trademark owner and the latter did not file the infringement action within 30 days from being notified, and the holder of a non-exclusive licence is entitled to file an infringement action only if such an action is authorized by the trademark owner. The licensee may join the infringement action initiated by the IP right owner. Under the previous law, licensees were entitled to file infringement actions, unless it was otherwise specified in the license agreement.

11. Levy of Execution

Under the new law, trademarks are subject to levy in the course of execution proceedings. This is a new provision which did not exist in the previous law.

12. International Trademark Use

In opposition, infringement, invalidity and non-use cancellation proceedings, the relevant registration date for an international trademark will be one year after the date of notifying WIPO of the request to extend protection to the territory of Serbia. If a trademark is still under examination after the expiration of one year, the registration date will be the date the IPO issues a statement of grant. There were no provisions specifying this in the previous law.

By: Sara Radić

For more information, please contact Sara Radić at our Serbia office.

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