New Trademark Law brings significant changes
The new Trademark Law of Montenegro came into force on December 16 2010. The law replaces the 2005 Trademark Law of the State Union of Serbia and Montenegro, which was applicable in Montenegro after the dissolution of the State Union in 2006.
Under the new law, the owners of trademarks registered in Serbia before May 28 2008 must enter them in the Montenegro Trademark Registry before December 16 2011. The trademarks will retain the details of the corresponding Serbian registrations (including the priority date), but will be assigned a new registration number. Serbian trademarks whose owners have filed a request for the issuance of a certificate of recognition, or have applied for renewal and/or the recording of a name/address change or assignment before the law came into force, will be exempted from this requirement. These trademarks will be entered into the Montenegro Trademark Registry automatically within the next 12 months and assigned a new registration number.
The principal features of the new law are as follows:
- Trademark protection will be granted to signs that serve to distinguish goods and services in commercial circulation, and can be graphically represented. This includes words, slogans, letters, numbers, pictures, drawings, layouts of colours, three-dimensional marks, a combination of these marks and musical phrases.
- Ex officio examination on relative grounds has been abolished. The trademarks will be examined on absolute grounds only and then published in the Official Bulletin of the Montenegro Intellectual Property Office. After publication, third parties can raise objections on absolute grounds and/or oppose the application within 90 days. If no objections are raised and no opposition is filed, or if the objection/opposition is unsuccessful, the trademark will proceed to registration.
- Opposition can be based not only on an earlier Montenegro trademark registration, but also - in anticipation of an EU membership - on a Community trademark registration, provided that the owner has filed an application for the registration of the mark in Montenegro. Non-registered trademarks can also serve as a basis for an opposition if they are well known under Article 6bis of the Paris Convention for the Protection of Industrial Property, or if they have been used in good faith in Montenegro before the application was filed, and even if they have been used in good faith in another country but the Montenegro application was filed in bad faith. Trademarks with a reputation benefit from an extended protection in Montenegro, even with regard to dissimilar goods.
- The decisions of the Intellectual Property Office can be appealed to the ministry. Under the previous law, such decisions could be challenged only by filing an administrative lawsuit before the court.
- Invalidation actions (ie, where the mark was registered even though it did not fulfil the conditions for trademark protection) now fall within the competence of the courts, rather than the Intellectual Property Office.
- A trademark is valid for 10 years from the date of application. Where a registration is a revalidation of a Serbian trademark, the renewal date corresponds to the renewal date in Serbia. Trademarks must be renewed in Montenegro separately. Renewal fees paid in Serbia do not cover Montenegro.
- Trademark use is compulsory. Trademarks that are not used continuously for more than five years from the date of registration or from the date of last use can be cancelled at the request of an interested party. Use in a slightly altered form, as well as use by a licensee and use for export, satisfies the use requirement.
- Registration entitles the trademark owner to prohibit third parties from using an identical or similar mark for identical or similar goods or services if there is a likelihood of confusion in the trade. This includes:
- using a registered trademark on goods or their packaging;
- offering and storing goods bearing a registered mark;
- offering and providing services bearing a registered mark;
- importing and exporting goods bearing a registered mark; and
- using a mark in business documentation and in advertising.
However, this does not apply to trademarks which were used in good faith before the law came into force. These trademarks can continue to be used in Montenegro.
- In case of infringement, trademark owner can request that the court:
- prohibit any activities that constitute trademark infringement;
- order the destruction of infringing goods, as well as the destruction of the tools used for their production;
- order the reimbursement of the legal costs;
- order the publication of the judgment at the expense of the infringer; and
- order the infringer to provide information about third parties that participated in the infringing activities.
The new law abolishes the provision of the 2005 law stipulating that, in case of wilful infringement, the infringer may be ordered to pay up to triple the amount of royalties that would have been due had the infringer obtained a licence.
- A trademark owner cannot sue a third party for trademark infringement if the latter, in line with good business practices, uses in the course of trade:
- its own name and address;
- descriptive indications (regarding the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods); and
- the owner's trademark, when this is necessary to indicate the intended purpose of the goods, in particular in the case of spare parts and accessories.
- The concept of worldwide exhaustion of rights has been replaced by that of national exhaustion.
- The law provides for preliminary injunctions and measures for securing evidence, including the ex parte inspection of premises, vehicles and documents, as well as the seizure of goods.
The Implementing Regulations are expected before the summer. Once they are in place, the Intellectual Property Office will start publishing trademark applications, so that third parties can oppose them. In the meantime, they will continue to enter Serbian trademarks in the Montenegro database based on requests filed before the new law came into force, and start accepting new requests for revalidation.
Gordana Pavlovic, Cabinet Pavlovic, Belgrade and Brussels
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