Enforcement of trademark rights facilitated under new Trademark Law

At its December 11 2009 session, the Serbian Parliament enacted a new Trademark Law, together with three other IP laws: the Law on the Legal Protection of Industrial Designs, the Law on the Topographies of Integrated Circuits and the Law on Copyright and Related Rights. The new Trademark Law was published in the Official Gazette of the Republic of Serbia (104/2009) on December 16 2009 and came into force on December 24 2009.

 

The new laws are part of Serbia’s effort to bring its IP legislation in line with EU standards. Serbia formally submitted its candidacy for EU membership on December 22 2009. Under the Interim Agreement on Trade and Trade-Related Matters, which entered into force on February 1 2010, Serbia has five years to reach a level of protection of IP rights similar to that existing in the European Union, including effective means of enforcing such rights. The European Union has funded a €2 million project to set up a Centre for IP Education and Information at the Serbian IP Office. The centre will provide IP training to companies (including small and medium enterprises), research institutes, courts, the police, market inspectorates, Customs, the media, legal entities and the public at large.

 

The former Trademark Law was already harmonized with the EU legislation to a certain extent, as established in the 2009 Progress Report. However, the new law provides a legal framework for certain practices of the IP Office which were not regulated by the law - for example:

A major change introduced by the new law is the appellate procedure. It is now possible to appeal decisions of the office to the Appellate Body. Under the previous law, the decisions of the office could be challenged only by filing an administrative lawsuit before the courts.

 

Another important change is that the owner of an unregistered well-known mark can now apply for the cancellation of an identical or similar mark for identical or similar goods before the office. Under the former law, the owner could only file a lawsuit requesting the transfer of the mark to it.

 

As was the case under the former law, trademarks can be assigned, licensed and pledged. The novelty is that:

In addition, the new law aims to facilitate the enforcement of trademark rights. It provides that:

The new law also provides for preliminary injunctions and measures to secure evidence, including:

Trademark owners can seek enforcement measures even before filing a lawsuit, provided that the suit is filed within 30 days of the measure being granted.

 

Finally, the new law maintains the principle of international exhaustion of rights. Therefore, trademark owners have no means of preventing parallel imports, unless the goods have been damaged or substantially altered.

 

The implementing regulations are expected to be passed by April 24 2010.