Serbia and Montenegro implements new Trademark Law

A new Trademark Law came into force in Serbia and Montenegro on January 1 2005 to replace the 1995 statute.

The new law reflects the country's efforts to harmonize its legislation with:

• international treaties (Agreement on Trade-Related Aspects of Intellectual Property Rights and the Trademark Law Treaty);
  
  
• EU legislation (Community Trademark Directive and Community Trademark Regulation); and
  
  
• World Intellectual Property Organization recommendations (Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks).

The principal features of the new law are outlined below:

• Trademark protection is granted to a mark that (i) serves to distinguish goods and services in commercial circulation, and (ii) can be graphically represented. This includes words, slogans, letters, numbers, pictures, drawings, colour combinations, three-dimensional marks, combinations of these marks and musical phrases.
  
  
• The law provides for protection of trademarks and service marks. Provisions regarding collective trademarks that existed in the old law have been expanded. The protection of certification marks has been introduced.
  
  
• The new law does not provide for opposition proceedings. Instead, the Intellectual Property Office examines trademarks both on absolute and relative grounds. It can request the applicant to disclaim an unprotectable part of the mark if that part could cause any uncertainty regarding the scope of protection.
  
  
• A trademark must now fulfil the conditions for protection at the time of registration rather than at the time of filing as was previously the case.
  
  
• Trademarks that were registered despite failing to meet the registration criteria can be challenged in invalidation proceedings. However, invalidation actions based on prior trademark rights will now only be considered when the prior mark was used (except in cases of bad-faith registrations).
  
  
• Trademark use is compulsory. Trademarks that are not used continuously for more than five years from the registration date or from the date of last use can be cancelled at the request of an interested party. Use must be serious. Use in advertising satisfies the use requirement only if the goods can be purchased. Use in a slightly altered form that does not change the distinctive character of the trademark, as well as use on goods solely for export satisfies the use requirement.
  
  
• Registration entitles the owner to prohibit third parties from using an identical or similar mark for the same or similar goods or services, if this may cause confusion in trade. This includes:
  
  
  • using the mark on goods and their packaging;
    
    
  • offering and storing goods under a registered mark;
    
    
  • offering and supplying services under a registered mark;
    
    
  • importing and exporting trademarked goods; and
    
    
  • using a mark in business documentation and in advertising.
• The trademark owner can institute an infringement action only if it has used its trademark. The court can be requested:
  
  
  • to prohibit the activities that constitute trademark infringement;
    
    
  • to order the destruction of infringing goods, as well as of the tools used for their production;
    
    
  • to grant indemnification and reimbursement of justified legal costs;
    
    
  • to order publication of the judgment at the expense of the infringer; and
    
    
  • to order the infringer to provide information about third parties that participated in infringing activities.
    
    

  In cases of wilful infringement, the infringer may be ordered to pay up to triple the amount of royalties that would have been due if the mark were licensed.

• The law provides for preliminary injunctions and for measures for securing evidence, including ex parte inspection of premises, vehicles and documents, as well as the seizure of goods.
  
  
• The law introduces the notion of trademark exhaustion. Serbia and Montenegro has opted for the concept of worldwide exhaustion, believing that other elements, especially distribution arrangements, would have more direct impact on parallel trade than trademark law. A trademark owner can stop parallel imports if there are legitimate reasons to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.
  
  
• The law provides for extended protection of marks with a high reputation, not only for goods or services for which the trademark is registered, or for similar goods, but also for dissimilar goods or services, provided that (i) use of the mark in relation to those goods or services would indicate a connection between those goods or services and the mark owner, and (ii) the interests of the mark owner are likely to be damaged by such use.
  
  
• The law specifies that to be considered to have a high reputation, a mark must be known among the relevant public, including actual and potential consumers of goods and services, and persons involved in the distribution channels.
  
  
• The law also provides for protection against bad-faith applications and registrations. A party whose interests are damaged by such an application or registration can request a court to issue a declaration that it is the owner of the application or registration.

Gordana Pavlovic, Cabinet Pavlovic, Belgrade and Brussels