In January 2020 National Assembly of the Republic of Serbia adopted the Law on Trademarks (“Official Gazette of the Republic of Serbia”, no. 6/2020) (“The Law”) which entered into force on 1st February 2020.
The main aim of the Law was to adapt to the novelties introduced in various European countries, with the main focus on enabling more accurate formulations and to facilitate law enforcement.
1.Elements of the Trademark
A logo registered as the trademark may be comprised of , inter alia, words, slogans, letters, numbers, images, drawings, combination of colors, three-dimensional shapes, combination of different signs or sounds.
This novelty indicates that the sign no longer needs to be represented graphically in order to be protected by the trademark. The reason for this novelty is the need to align and adapt the existing legal framework for trademark protection with the needs imposed by modern technologies. In practice, respective provisions enable trademarks to consists of moving pictures, multimedia trademarks, sound trademarks and other e-signs.
2. New Ultimate Ground for Refusal of Registration
Another novelty is the introduction of the new reason for refusal of trademark registration. Assumed intention was to prevent the unauthorized registration of geographical origin as well as protected names of plant varieties. Therefore, the trademark will not be registered if the logo consists of the mark of geographical origin valid in the territory of the Republic of Serbia, which refers to the same type of goods or services as the one already registered earlier for particular plant variety.
3. Objection to Requested Registration
One of the most significant novelties of the new law, is the introduction of right to object to process of examining applications, instead of ex officio examining relative reasons for refusing an application.
The purpose of this system is to enable interested parties – holders of earlier right, to oppose the registration of the particular trademark if they believe that registration in question jeopardizes or violates their rights and interests.
The Law stipulates that the grounds for objection may be: i) relative grounds for refusal of registration, which are exhaustively enumerated in the Article 6 of the Law, e.g. if the disputed trademark is identical to the earlier trademark for the same type of goods or services, or by its appearance or content, infringes copyright or industrial property rights; or ii) special grounds for refusal of registration ( Article 7 of the Law) concerning the authorization granted to a company, which is already registered in a relevant register, to prevent the registration of a trademark that is identical or similar to the name or a substantial part thereof on condition that the goods and services of the opponent are identical or similar to the goods and services that are the subjects of the trademark application.
The objection may be based only on the above grounds and may be submitted by the holder of the earlier right to the competent authority within 3 (three) months from the date of publication of the application, in the Official Gazette of Intellectual Property.
In this way, domestic legislation accepts a solution that has been presented in the national legislation of most European countries for many years.
4. Modification of Legal Remedies
The significant novelty is the abandoning of the administrative appeal as a legal remedy against the Intellectual Property Office decisions, after 10 years of applying this model in our legal system. Instead, it is introduced the possibility of initiating administrative dispute before the Administrative Court.
5. The Holder of a License
In section which regulates protection of civil laws, new Law stipulates that the infringement actions may be initiated by the holder of the license i) only with the consent of the trademark holder or; ii) if holder of the license have informed the trademark holder on the trademark infringement and the trademark holder omits to initiate infringement procedure within the 30 (thirty) days of receiving a formal notice.
6. Exhaustion of Intellectual Property Rights
In accordance with the EU system and the goal of establishing a single European market, as well as the principle of free circulation of goods under Article 4 of the Law on Trade (“Official Gazette of RS“, no. 52/2019), new Law introduces the principle of “International Exhaustion Regime”, instead of so far existing National Exhaustion Regime.
The previous system has caused a great deal of controversy and conflict with the basic principles of free trade and protection of competition rules. This system inhibits the parallel import of goods and the trademark holder could prohibit the sale of goods by third parties, if those third parties acquired goods marked with the trademark abroad and then imported it into the Republic of Serbia for resale.
The new system of international exhaustion allows free circulation of goods, and the trademark holder has no right to prohibit the use of the trademark in connection with the goods marked with it which have been placed on the market anywhere in the world by the trademark holder or the parties authorized by him.
Bearing all of the above said in mind, it remains to be seen how this modern law will be implemented in practice.
author: Nikola Gagic