Draft Trademark Law presented to Parliament
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The proposed new Trademark Law, which was drafted by the Serbian Intellectual Property Office, has been approved by the Council of Ministers and has now been presented to Parliament. The current Trademark Law already incorporates most of the relevant EU legislation and the proposed changes represent a further step towards achieving EU standards.
The main change is the introduction of an appeal procedure. Currently, the decisions of the IP Office can be challenged only by bringing an administrative action before the Supreme Court. The proposed law introduces a second instance: it will be possible to appeal to a body appointed by the Council of Ministers. The decision of that body can then be challenged before the Supreme Court.
The proposed law maintains the ex officio examination of trademarks on absolute and relative grounds. The law does not provide for opposition proceedings. However, an interested party will be able to file a notice of observation suggesting that the office refuse to register a mark. Although this procedure was already in use, it has now been incorporated into the proposed law.
The absolute and relative grounds for refusal will remain the same. However, the proposed law provides as follows:
- It will be possible to disclaim the parts of a mark which are:
- not distinctive; or
- descriptive or commonly used for the goods and services at issue.
- The office will not allow the same entity to register identical trademarks for identical goods.
- The office will take letters of consent into account, unless the trademarks at issue are identical and cover identical goods.
- The phrase “possibility of confusion in trade” will be replaced by “likelihood of confusion in the relevant part of the public”.
Although the aforementioned procedures were already in use, they were not explicitly mentioned in the current Trademark Law. Therefore, the proposed law will remove any ambiguities regarding the practice of the office.
Under the current legislation, the expedited examination of a trademark application can be requested only by the courts. However, under the proposed law, market inspectors and Customs will also be able to request expedited examination. This represents a significant development, as market inspectors and Customs play an increasingly important role in trademark enforcement. Trademark owners will be entitled to request the expedited examination of an application only where:
- registration of the mark is necessary to obtain an international registration under the Madrid Agreement concerning the international registration of marks; or
- registration is required under other relevant laws (eg, the legislation on pharmaceutical products).
The proposed law also aims to facilitate the enforcement of trademark rights. Among other things, the proposed law provides that:
- trademark owners will be able to prohibit the unauthorized use of their mark not only on goods and packaging, but also on elements that are independent of the goods (eg, labels and bottle caps); and
- goods in transit may infringe trademark rights.
Trademark owners will not be able to prevent parallel imports (unless they have a legitimate interest in doing so, especially if the goods are defective), since the new law maintains the principle of worldwide exhaustion of trademark rights.
As under the current law, it will be possible to enter into assignment, licensing and pledge agreements. However, under the proposed law, the recordal of pledges will be mandatory - a pledge that is not recorded will be deemed invalid.
Moreover, under the proposed law, mergers will be considered as assignments. Registration will be optional but recommended to ensure that the assignment produces legal effects vis-à-vis third parties. The office will refuse to record an assignment if the assigned trademark may create confusion as to the type, quality or geographical origin of the goods.
The recordal of licences will remain optional but recommended. If a licence has been recorded, the trademark owner will not be able to renounce its trademark rights without the licensee’s consent. Further, if the trademark owner fails to pay the renewal fee, the office will invite the licensee to make the payment instead.
As is the case under the current Trademark Law, the proposed law provides for the protection of well-known marks against use of similar or identical trademarks for similar or dissimilar goods. The novelty is that the owner of an unregistered well-known mark will be able to apply for the cancellation of an identical or similar mark for identical or similar goods before the office. Under the current legislation, the owner of an unregistered well-known mark may request only that the court transfer the similar trademark to it.
It is expected that the new law will be approved by Parliament before the end of the year.
Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade
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