Seven rules for overcoming provisional refusal based on relative grounds in Serbia

Most jurisdictions in the Balkans use a straightforward opposition system - new trademark applications are examined on absolute grounds, published and then open to third-party opposition based on relative grounds. This is true for national and international applications with local designations.

However, even though the Intellectual Property Office of the Republic of Serbia (IPO) updated opposition system back in February 2020, it continues to examine new applications for relative grounds for refusal. This means that foreign trademark owners are often met with provisional refusals based on relative grounds.

However, the following seven steps should ensure that this is no bar to foreign trademark owners.

One - It is necessary to find a local agent. Serbia’s IPO website has a list of these, while word-of-mouth recommendations of an internet search engine will provide you with a decent number of IP specialists.

Two - Terms for reply to the issued provisional refusal can be extended multiple times.

Three - Since any previous applications/registrations that act as an obstacle to your mark’s registration will likely be cited by the IPO, one effective strategy can be to obtain a letter of consent. These should always be provided on company letterheads and include a company seal/stamp.

Four - It is possible to request cancellation due to non-use. This works only if the mark is still within five years from its registration date or last known use and is not being used on the market. It is difficult to determine non-use, as it is always harder to prove a negative fact. However, depending on the goods, a quick online search and visits to large marketplaces selling these types of products should give the owner a good picture of the market.

Five - Of course, it is also possible to reply to the provisional refusal with argument and/or limitation of the list of goods and services.

Six - It is always important to reply to provisional refusals. At times foreign trademark owners do not understand that the Serbian IPO will not go into comparisons and limit lists of goods and services, but will rather reject whole classes even when only one or two points are identical or highly similar.

Seven – The Serbian IPO does not allow the coexistence of identical marks, even when they are owned by the same entity. This is often a point of confusion with our clients, as there is no real conflict occurring. However, this is the stance the IPO has taken, so if truly identical, the only resolution is to withdraw one of the marks or let the new application be refused. It is often suggested that the earlier mark should be sacrificed, as a new cancellation-due-to-non-use period starts with the new registration, and there is no actual time that the mark is not protected in one way or another, so no other applications may cause an issue.

Deciphering the likelihood of success and the best approach should be left to an experienced local agent, as often many approaches are available.

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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