Opposition against national trademark applications now possible
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A year after the opposition procedure was introduced in Montenegro, the first round of pending trademark applications has been published for opposition in the December issue of the Official Bulletin of the Montenegro IP Office (No 7/2011).
The new Trademark Law, which came into force on December 16 2010, introduced an opposition procedure. The deadline for filing an opposition is 90 days from the date of publication of the trademark in the Official Bulletin. For international trademarks, the deadline is calculated from the date of publication in the WIPO Bulletin.
Although it was possible to oppose international trademark applications (published in the WIPO Bulletin), this was not the case for national trademark applications. National trademarks were examined both on absolute and relative grounds, applications were not published and third parties did not have a possibility to oppose their registration.
This has now changed. On October 29 2011 the regulations regarding the procedure for trademark registration, recordal of changes, trademark renewal and international registration of trademarks came into force. The regulations provide, among other things, a legal framework for the publication of trademark applications. In the latest Official Bulletin, published on December 20 2011, 92 trademark applications were published, and third parties have 90 days to oppose them.
The grounds for opposition are similar to those set forth in the EU legislation. A trademark can be opposed based on:
- an earlier trademark registration covering identical or similar goods; or
- a mark which is well known within the meaning of Article 6bis of the Paris Convention.
Earlier trademarks covering dissimilar goods can also serve as a basis for opposition where the trademark has a reputation in Montenegro and use of the later mark would harm the reputation of the earlier mark. A copyright and other IP rights can also serve as a basis for opposition. Moreover, a person can oppose the use of his/her personal name and image. Finally, a trademark owner can oppose a trademark application filed by a commercial representative without the owner’s consent.
The IP Office will forward the opposition to the applicant, which has 60 days to respond. If the applicant does not respond, the opposition will be granted automatically.
A decision to grant an opposition and refuse to register a trademark can be appealed to the Ministry of Economy. If the opposition is refused and the trademark is registered, the opponent can institute invalidation proceedings before the competent court.
Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade
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