Trademark owners given 12-month deadline under new trademark law

The Montenegrin parliament is expected to adopt a new trademark law in early July. The law will enter into force on the eighth day of its publication in the Official Gazette.

The most important provision of the new law affects the owners of trademarks registered with the Serbian Intellectual Property Office (IPO) before May 28 2008 - ie, the date on which the Montenegrin IPO started operations (for further details please see "Montenegro Intellectual Property Office to open"). 

The decree on the enforcement of IP rights, which regulated the validity of Serbian IP rights after the Montenegrin IPO opened for business, provided that trademarks registered with the Serbian IPO on the territory of Montenegro would be valid until their renewal date, without having to re-register them or pay any additional fees.

However, under Article 65 of the new law, trademark owners must request that their rights be entered into the Montenegrin Trademarks Register within 12 months of the coming into force of the law. This rule does not apply to trademark owners which have:
  • filed a request for renewal;
  • filed a request for a Montenegrin certificate of registration;
  • filed a request for a change of name and/or address; or
  • filed an assignment of rights before the Montenegrin IPO after the beginning of its operations.
These types of requests are regarded as requests for the entry of rights into the Trademarks Register.

In addition, the new trademark law aims to shorten the trademark registration process and achieve full compliance with the relevant EU regulations by:

  • abolishing the practice of substantive examination on relative grounds; and
  • introducing opposition proceedings.
Under the new law, a trademark application will be examined on absolute grounds only. If it meets the requirements for registration, the application will be published in the Official Gazette of the Montenegrin IPO. Third parties will have three months from the date of publication to file a written opposition.

The new trademark law will comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights, which is crucial for Montenegro's accession to the World Trade Organization.

Another novelty will be the possibility to appeal decisions of the IPO to the competent ministry. Furthermore, actions for the cancellation of a registered trademark will be heard by the competent court, as opposed to the IPO.

Jasna Jusic Paovic, PETOŠEVIC, Podgorica

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