Law on Trademarks
(Official Gazette RS no. 6/20)
On January 24, 2020, the Parliament of the Republic of Serbia adopted the new Law on Trademarks. Its implementation shall begin on Saturday, February 1, 2020. The aim of the new law is to harmonize Serbian legislation in the field with the European legislation, hence the introduction of many novelties. Summary of essential novelties is listed below:
- Examination procedure – opposition is introduced
The specifics of the introduced procedure are presented below:
- Ex officio procedure conducted by the IPO
– Serbian IPO will examine ex officio both on absolute and on relative grounds.
– The institute of observation which may be lodged by any interested party remains, and can relate to both absolute and relative reasons for the refusal of protection. It can be submitted during the ex officio procedure conducted by the IPO (i.e. before the opposition procedure starts).
– If the IPO does not reject or refuse the trademark application, such application shall be published in the Intellectual Property Gazette.
- Opposition procedure
– Upon publication, the opposition procedure starts. Opposition notice may be lodged based on the relative grounds within 3 months as of the date of publication of the trademark application.
– The parties shall, upon their joint request, be granted 24 months in the opposition proceedings, in order to allow for the possibility of a friendly settlement between the opposing party and the applicant.
– When the opposition relates to international trademarks, deadline for filing of the opposition notice shall be calculated as of the date of publication of the international trademark registration, i.e. publication of the international territorial extension in the Official Journal of the International Bureau of the World Intellectual Property Organization.
- Designation and classification of the goods and services
The use of general terms, including general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim over goods or services which do not explicitly derive from therein.
- Use of international trademarks – date of international registration
Special provision is introduced for the purposes of evidencing the use of international trademarks in the cancellation, revocation and opposition proceedings. Namely, shall be considered as the date of international registration, the date on which the deadline of one year from the date of notification of international registration of the trademark designated for the Territory of the Republic of Serbia has lapsed.
- Exhaustion of Rights – international exhaustion of rights is introduced
A trademark does not entitle its holder to prohibit its use in connection with goods marked with such trademark and placed in circulation anywhere in the world by the holder of the trademark or other person authorized by the holder.
- Non-use of a trademark
In the case where a trademark has been terminated due to non-use, the trademark in question shall cease to be valid on the date of filing of the claim for its cancellation due to non-use. All decisions rendered by the IPO are final and cannot be appealed, but they can however be challenged through an administrative law dispute.
