Enforcement of trademark rights facilitated under new Trademark Law
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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:
- the possibility to overcome an objection on absolute grounds by disclaiming the elements of a trademark that are descriptive or generic;
- the possibility to overcome an objection on relative grounds by submitting a letter of consent; and
- the possibility to file a notice of observation (the Serbian legislation does not provide for opposition proceedings).
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:
- pledges must be recorded with the office in order to be deemed valid (recordal is not mandatory for trademark assignments and licences); and
- the office may refuse to record an assignment if the assigned trademark could create confusion on the market as to the kind, quality or geographical origin of the goods.
In addition, the new law aims to facilitate the enforcement of trademark rights. It provides that:
- trademark owners may prohibit the 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
- trademark rights may be infringed by goods in transit.
The new law also provides for preliminary injunctions and measures to secure evidence, including:
- ex parte inspection of premises, vehicles and documents;
- seizure of goods; and
- interrogation of witnesses.
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.
Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade
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