Key knowledge for filing oppositions in the Balkans
It is now possible to file oppositions in the following jurisdictions in the Balkans:
- Serbia; and
The typical process in these jurisdictions is for local IP offices to examine new trademark applications on absolute grounds, which are then published and opened for third-party opposition based on relative grounds.
The non-extendable term is usually three months from publication or 90 days in Macedonia and Montenegro.
If the owner of an established trademark believes that there is a high degree of similarity between its own mark and the one being submitted, it can file for a full or partial rejection through a local agent.
The IP office will then present the opposition request to the filer of the new mark, which will also be able to submit a written argument. The IP office will then decide upon the matter.
Filers are well advised to bear in mind the following aspects of trademark regimes in Balkan countries.
Proof in oppositions
Those who face an opposition should be prepared to request proof of use from the opposing party; if they cannot provide this their case will be rejected.
The Serbian IP Office can protest a registration based on relative grounds
It can do this through official action, although it did introduce the possibility of oppositions back in February 2020. The current system is a hybrid of what existed before this change (when the office examined all applications for absolute and relative grounds).
Overcoming oppositions can be somewhat different than in other jurisdictions, as the other side does not own a pre-existing trademark – so letters of consent and/or cancellation actions all come into play.
Also, the reply and subsequent actions will be between the filer of the new application and the IP office itself, the opposing party will not be informed about the case’s progression.
Lack of response
Provided that the opposition itself is filed according to the law, if no reply is provided within the time frame provided by the local law (between 60 days and three months, again, non-extendable), the IP office in question will reject the registration partly or as a whole, depending on the scope of the opposition.
Hearings are possible, but seldom held
Almost all opposition matters are fought and resolved on paper, however, the laws do allow local examiners to hold a hearing.
If either party is displeased with the outcome, it is possible to file an appeal, which is decided by a board of appeal at the IP office or usually at the relevant ministry, often followed by the opportunity to file a lawsuit before the administrative court if the result of the appeal is also unsatisfactory.
Unless new information is presented along with convincing evidence as to why it was not presented at an earlier stage of the proceedings, it is highly likely that the original decision will be upheld.
This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight
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