Amendments to Trademark Law introduce significant changes

On January 29 2013 the Serbian Parliament adopted amendments to the 2009 Trademark Law. The amendments were published in the Official Gazette No 10/2013 on January 30 2013, and came into force on February 7 2013. In addition to removing certain redaction errors, the amendments introduce several changes to the protection of trademarks in Serbia - some of which are fundamental.

The 2013 amendments represent a further step towards the harmonisation of the Serbian trademark legislation with EU law. An earlier attempt was made three years ago, when Serbia enacted its Trademark Law, bringing most of its trademark legislation in line with EU standards. The 2013 amendments correct certain redaction errors and introduce several changes:

• Parallel imports - in the past, trademarks owners had no means of preventing parallel imports, unless the goods were damaged or their condition had been substantially altered. The 2013 amendments fundamentally change this, replacing the principle of international exhaustion with that of national exhaustion.
• Goods in transit: the amended Trademark Law no longer recognises that the transit of counterfeit goods destined to another country through the Serbian territory constitutes an infringement. Under the 2009 Trademark Law, goods in transit were not an issue, because the law explicitly provided that trademark owners could prohibit not only the import and export of counterfeit goods, but also their transit through Serbia.
• Revision (cassation): with regard to legal remedies, the amended Trademark Law provides for the possibility of challenging second instance judgments in trademark infringement cases by submitting a motion for revision before the Cassation Court. This right is no longer subject to the value of the claim. This is good news for trademark owners, as previously they had a right to revision only in cases where the value of the claim exceeded €300,000.
• Three-dimensional (3D) trademarks: the amended law introduces a new exception with regard to the protection of 3D trademarks (ie, a shape that adds substantial value to the product cannot be registered) in order to bring the law into line with Article 3(1)(e) of the Trademarks Directive (2008/95/EC).
• Improved enforcement: the amended law provides for additional remedies. A trademark owner can now claim not only material (pecuniary) damages, but also immaterial damages (harm to reputation). In addition, punitive damages - up to triple the amount of the licensing fee that the trademark owner would have charged for use of its mark - are now available not only in case of wilful infringement (as was the case under the 2009 Trademark Law), but also in case of gross negligence. Further, the court can now order not only the infringer, but also other entities involved in the illegal activity, to provide information about the infringing goods. In addition, the right of a licensee to sue is now regulated in more detail: unless stipulated otherwise in the licensing agreement, a licensee is entitled to sue regardless of the type of licence involved. In the past, only exclusive licensees had the right to sue.

The amended law will apply to all proceedings instituted after February 7 2013, when it came into force. Proceedings instituted before that date will be completed under the provisions of the 2009 Trademark Law.

Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade