Important amendments to industrial design law come into force


The Law on Amendments to the Law on the Legal Protection of Industrial Designs, which came into force in Serbia on May 30 2015, aims to further harmonise Serbian legislation with that of the European Union and bring it into line with Directive 98/71/EC on the legal protection of designs and the IP Rights Enforcement Directive (2004/48/EC).

The definition of a 'novel' industrial design has been updated, and now explicitly states that the novelty requirements are fulfilled not only where there is no earlier application for an identical industrial design, but also where such earlier application has not been made available to the public.

The amendments also include an exception to the disclosure of an industrial design - that is, the design will be considered disclosed if it was published following its registration or otherwise, or exhibited, used in trade or otherwise disclosed (before the date of filing of the application for registration or, if priority is claimed, the date of priority), except in case where such events could not reasonably have become known, in the normal course of business, to the circles specialised in the sector concerned, operating within the Republic of Serbia.

Although the law still provides that the description of the features of an industrial design is a mandatory part of an application, it has simplified its content: the description should now cover only the design’s original/novel features, whereas previously it had to cover the appearance of the whole product.

In terms of the reproductions of a design (drawings or photographs), the law now prescribes that they must display not only the design features, but also the features of the parts that are visible during normal use. The reproductions must clearly display the novel elements of the design, as well as the elements that have not been publicly disclosed.

Furthermore, the scope of the protection granted to an industrial design is no longer determined by the description of the design based on its reproduction. The new law prescribes that the scope of protection applies to any design that does not produce a different overall impression on an informed user.

In addition the law now includes new remedies that can be sought through an action for industrial design infringement. A plaintiff is now entitled to request the seizure or removal from the channels of commerce of the infringing items, materials, tools, etc used to create the infringing products. The plaintiff can also seek compensation for the non-material damage suffered. Previously, only the authors of industrial designs were entitled to seek such compensation.

For the first time, the law introduces an extraordinary legal remedy that can be sought against final decisions (issued at second instance), in cases concerning industrial design infringement and use.

Further, in line with Article 12.1 of Directive 98/71/EC, the law has amended the provision concerning the rights conferred by design rights by excluding the transit of products in which the design is incorporated or to which it is applied, as such products are not in free circulation and are not intended to be placed on the Serbian market.

The law also amended the provisions concerning the limitation of the rights conferred by a design registration - that is, upon registration, such rights will not be exercised in respect of acts done privately and for non-commercial purposes (the previous provision contained only an exclusion in terms of acts done for non-commercial purposes).

Finally, the accelerated examination of a request for the international registration of an industrial design (ie, of the national applications on which such requests are based) is no longer available (in line with the Hague Agreement, the international application does not require any prior national application or registration).

Tijana Milijanovic, PETOŠEVIĆ, Belgrade

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