The substantial amendments of the new Montenegrin Law on Amendments of the Law on Trademarks, which entered into force on January 18, 2023 (read more here) did not affect the provision on the exhaustion of the Trademark rights.
It is important for trademark holders to be acquainted with regime of exhaustion of trademark rights currently in force in Montenegro and not to overlook the interdependence of national principle and regional principle.
Montenegro – desired destination to ban grey market products moving to other EU and Balkan countries – Learn more about parallel import in Montenegro by reading our summary of the key findings
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According to Article 15 of the Montenegrin Trademark Law, the act of placing goods on the market on the territory of Montenegro that are marked with a trademark, by the trademark holder or with his/her explicit consent, exhausts the exclusive rights arising from the trademark in relation to those goods. This provision introduces principle of national exhaustion of trademark rights.
The Trademark Law further confirms that the same principle would apply if goods were placed on the market of the European Union or that of countries that are Parties to the European Economic Area Agreement. This provision introduces principle of regional exhaustion of trademark rights, like that in the EU. The intention of the lawmaker was to harmonize Article 15 of the Law with Article 7 of Directive 2008/95/EC of the European Parliament and of the Council, as obliged in the proceedings of accession to EU.
However, when creating the enforcement strategy for the Balkan region and Montenegro particularly, it should keep in mind that the principle of regional exhaustion of trademark rights is not in force yet, as it was postponed until Montenegro’s accession to the European Union (Article 65a of the Trademark Law)
Therefore, for the time being, the principle of national exhaustion of trademark rights in Montenegro will remain the only principle of exhaustion in force, enabling trademark holders to tackle grey market products coming to Montenegro by parallel channels of trade.
Authors:
Vladimir Marenovic, Senior Counsel / Attorney at Law
Rajka Vukcevic, Lawyer
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