Montenegro specifies trademark revalidation requirements

Montenegro has passed a decree on the recognition of IP rights obtained in the former state union of Serbia and Montenegro before June 3 2006 and in the Republic of Serbia after that date. The decree was published in the Official Gazette of Montenegro on October 12 2007 and came into force on October 20 2007.

Whether an application for trademark registration filed in the former state union of Serbia and Montenegro (known as the Republic of Serbia as of June 3 2007) must be revalidated in Montenegro will depend on its status in Serbia on the date on which the Montenegro IP Office starts operating (which is expected to be at the end of this year).

Trademark applications that are pending in Serbia on that date will have to be revalidated in order to be recognized in Montenegro with their original priority date. The revalidation application must be supported by a copy of the trademark application with enclosures and a revalidation fee must be paid (the amount of which is still to be determined). Revalidation applications must be submitted within six months of the IP Office starting its operation.

Trademarks which are registered and valid in Serbia on the date on which the IP Office starts operating will be recognized automatically in Montenegro. Owners will be able to obtain a certificate of registration in Montenegro, provided that they submit evidence to the IP Office that the trademark was registered and valid in Serbia on the relevant date.

A request for trademark renewal filed in Serbia before the relevant date will be recognized automatically in Montenegro. A trademark owner wishing to renew a trademark after that date will have to pay a separate fee in Montenegro and submit evidence that the trademark was valid in Serbia on the relevant date.

On December 4 2006 Montenegro deposited a declaration of continued application in Montenegro of the Madrid Protocol and Madrid Agreement at the
World Intellectual Property Organization (WIPO). As of that date it became possible to designate Montenegro in applications for international registration with WIPO.

With regard to international trademarks registered before December 4 2006, a distinction is made between:

• trademarks registered before June 3 2006 designating Serbia and Montenegro (code YU); and
  
  
• trademarks registered after June 3 2006 designating Serbia (code RS).

An international trademark designating Serbia and Montenegro and registered before June 3 2006 will be valid in Montenegro (code ME), provided that the trademark owner has filed a request for continuation of effect with WIPO, as provided for by Article 39 of the Common Regulations. The deadline is six months from the date on which the trademark owner has received notification from WIPO.

International trademarks designating Serbia registered between June 3 2006 and December 4 2006 will have to be revalidated in Montenegro within six months of the IP Office starting its operation. Requests for revalidation must be filed with the IP Office and be supported by evidence that the international trademark was registered in Serbia during the relevant period.

The date on which the IP Office starts operating will be published in the Official Gazette. The IP Office is currently recruiting staff and preparing a schedule of fees. As it is expected to launch its operation at the end of this year, the deadline for filing revalidation applications should fall towards the end of June 2008.

Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade