Trademark procedures and strategies: Serbia
The following national laws govern trademarks in Serbia:
- the new Law on Trademarks (in force from 1 February 2020);
- the Customs Law (Official Gazette RS 95/2018, Part II – “Measures for the protection of intellectual property rights at the border”);
- the Law on Special Authorities for the Efficient Protection of IP rights (Official Gazette RS 46/06 and 104/09); and
- the Law on Trade (Official Gazette RS 52/2019).
Serbia is a signatory to the following international agreements relating to trademarks:
- the Paris Convention for the Protection of Industrial Property (1883);
- the Madrid Agreement on the International Registration of Trademarks (1891);
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
- the International Classification of Goods and Services (Nice Agreement, 1957);
- the International Classification of the Figurative Elements of Marks (Vienna Agreement, 1973);
- the Nairobi Treaty on the Protection of the Olympic Symbol (1981);
- the Trademark Law Treaty (1994);
- the Singapore Treaty on the Law of Trademarks (2006); and
- the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.
A trademark right is a legislative right that is acquired by registration. Unregistered marks are not regulated by the Law on Trademarks, except for well-known and famous trademarks. However, this status must be established.
All natural or legal persons involved in trade can apply for and own a mark. It is not necessary to prove such activity. Associations and non-governmental and charity organisations and funds may own trademarks.
Foreign undertakings not based in Serbia are represented by a local attorney or registered IP agent. Power of attorney can be filed belatedly and need not be notarised or legalised.
Any sign that is capable of distinguishing the relevant goods or services in the course of trade may be protected as a trademark, provided that it is capable of being presented in the Register of Trademarks in such a manner as to enable the competent authorities and public to clearly and precisely establish the subject of protection. A sign may comprise any sign, especially words (including personal names) slogans, letters, numbers, drawings, colours, three-dimensional shapes, the shape of goods or its packaging, as well as a combination of such signs or sounds.
A sign cannot be protected as a trademark on absolute grounds if it:
- is contrary to public policy or morality;
- is descriptive;
- is not distinctive;
- consists exclusively of the shape or other characteristic which results from the nature of the goods or the shape or other characteristic of the goods which is necessary to obtain a technical result, or from the shape or other characteristic that gives substantial value to the goods;
- is generic;
- is deceptive to the public as to the nature, quality or geographical origin of the goods or services;
- contains official signs or hallmarks of quality control or warranty, or imitations thereof unless approved by the competent authority;
- does not fulfil conditions for registration in the meaning of Article 6ter of the Paris Convention unless approved by the competent authority;
- comprises a state coat of arms, flag or other emblem, or other official sign of the Republic of Serbia, unless approved by the competent authority;
- represents or imitates a national or religious symbol;
- consists of or contains an indication of geographical origin valid in the Republic of Serbia and which relates to the same or similar goods or services; and
- contains an earlier protected plant variety denomination or reproduces it in its significant elements and which relates to the plant variety of the same or similar plant species.
Generic, descriptive and non-distinctive signs may be protected as a trademark if the applicant proves that the serious use of such sign has rendered that sign capable of being distinguished in the trade for the goods and/or services concerned.
A sign cannot be protected as a trademark on relative grounds if it:
- is identical to an earlier trademark registered for identical goods or services;
- is identical or similar to an earlier trademark of another person registered for identical or similar goods or services, if this may cause confusion among the public or a likelihood of association with the earlier trademark;
- is identical or similar to the same or similar goods or services of a third party’s sign which is well known in Serbia within the meaning of Article 6bis of the Paris Convention;
- is, regardless of the goods or services concerned, identical or similar to an earlier trademark, if the use of such a mark would result in an unfair benefit from the reputation acquired by the famous trademark or in harm to its distinctive character or reputation; and
- infringes copyright or other IP rights by its appearance or content.
The likeness or name of a person can be protected as a trademark only with that person’s consent. The likeness or name of a deceased person can be protected as a trademark only with the consent of his or her parents, spouse or children. The likeness or name of a historical person or other deceased famous person can be protected as a trademark only with the authorisation of the competent authority and the consent of such person’s relatives up to the third degree of kinship.
To establish well-known and famous trademarks, it is necessary to prove genuine use of the mark which has rendered it capable of distinguishing the relevant goods or services in the course of trade. It is possible to enforce unregistered marks based on the unfair competition rules of the Law on Trade.
Legal protection of trademarks is acquired through administrative proceedings at the Serbian IP Office. The procedure is commenced by filing a trademark application, which is subject to both formal and substantive examination. The application is first formally examined. In substantive examination, the IP Office examines the application on absolute and relative grounds. During the examination procedure, any party may file a written opinion citing reasons for which the trademark application does not meet the grounds for registration. Such party is not considered to be a party to the administrative proceedings.
If an application is not eligible for trademark registration, the applicant is invited to respond within a specified timeframe. If it fails to meet the examiner’s request or if the examiner still deems the trademark to be unregistrable, the application will be refused either fully or for certain goods or services.
Historically, opposition was not provided in Serbia; the new Law on Trademarks (1 February 2020) changes that.
Upon examination proceedings, the IP Office publishes the application in the Official Gazette. An opposition may be filed within three months of the publication date. For international trademark applications based on the Madrid Protocol, the three-month term starts on the first day of the month that follows the month cited in the WIPO Gazette in which the international registration was published.
The opposition may be based only on relative grounds. It may also be raised by a company whose firm name or substantial part of its firm name (that has been inscribed in the respective register prior to the date of filing the trademark application) is identical or similar to the trademark application, unless the applicant of the trademark had the same or similar firm name at the time of filing the trademark application. An additional condition is that the goods or services that the company deals with in its course of business are identical or similar to those covered by the trademark application.
Finally, the opposition may be filed by the trademark owner against the application filed by the owner’s representative without the owner’s approval, unless for justified reasons.
On examining the opposition, the IP Office notifies the applicant about the opposition and the 60-day term within which to respond. If no response is filed, the application will be refused in the scope of the reasons cited in the opposition. If the response is submitted, the IP Office will examine the file and decide on the opposition. A hearing with the IP Office may be scheduled. The parties may amicably resolve the issues and notify the IP Office of the settlement, in which case the office will terminate the procedure.
If the application meets the requirements for trademark registration, the applicant is invited to pay the prescribed fees. On payment, the IP Office will issue a trademark registration certificate and enter the trademark in the Trademark Register. The trademark is then published in the Official Gazette.
Trademark protection is granted for 10 years from the filing date and may be renewed an indefinite number of times. A trademark may be renewed no earlier than six months before its expiry by filing a request on a prescribed form and paying the prescribed fee. Belated renewal is allowed within a six-month grace period with a prescribed penalty fee.
Removal from register
Revocation: A trademark can be removed from the register based on the following grounds:
- The trademark has not been in genuine use on the Serbian market for five years, without justified reason.
- The trademark has become a generic term for the goods or services for which it was registered, due to acts or omissions of the rights holder or its successor.
- The trademark has become misleading as to the geographical origin, type, quality or other characteristics of the goods or services as a result of the manner of its use by the rights holder or its successor.
- The trademark has become contrary to public policy or morality.
- A collective or certification mark has been used contrary to a general act.
These procedures are commenced by filing a written request, accompanied by prescribed particulars, annexes and their contents. A regular request is sent to the rights holder, which is entitled to respond within a certain timeframe. A hearing with the IP Office may be scheduled. After completion of the procedure, the IP Office will issue a decision either revoking the trademark (either fully or for certain goods or services) or refusing the revocation request. In case of revocation due to non-use, the trademark ceases to be valid from the date of filing the request for termination. In other cases, the trademark ceases to be valid as of the day following the date on which the termination decision became legally valid and binding.
Termination: A trademark will be terminated on expiry of the 10-year period for which the initial fee has been paid. A trademark may also be terminated:
- if the rights holder relinquishes its trademark rights, on the date following receipt of a statement of relinquishment;
- as a result of a court decision, on the date specified in the judgment; or
- if the rights holder ceases to exist (legal person) or dies (natural person), on the date of cessation or death, except where the trademark has been transferred to successors.
Invalidation: A trademark may be declared invalid if the requirements prescribed by the Trademark Law are not met at the time of its registration. It may be declared invalid, either fully or for certain goods or services, at any time during the term of protection on the request of an interested party or the state prosecutor. For reasons based on relative grounds, invalidation may be requested only by the holder of the earlier right, unless the holder of the earlier right knew about the use of the latter mark for five consecutive years and did not object to it, and under the condition that the earlier mark was used within the five years preceding the date of filing the invalidation request. The procedure for invalidation of a trademark is commenced by filing a written request with appropriate evidence and prescribed data. The rights holder may respond within a certain timeframe. A hearing may be scheduled. After completion of the procedure, the IP Office will issue a decision either invalidating the trademark (either fully or for certain goods or services) or refusing the request. An invalidated trademark is considered to have had no legal effect.
The trademark application procedure takes six to 18 months, depending on whether objections have been raised. The procedure for recordal of changes in the Trademark Register takes around one month, as does the renewal procedure.
Official trademark searches are available. Results of the searches usually come through within two weeks.
Trademark rights may be enforced through:
- trademark infringement action;
- unfair competition action;
- customs action (not available for unregistered rights);
- Market Trade Inspectorate action (not available for unregistered rights);
- criminal proceedings; or
- copyright infringement action.
Proceedings before the first-instance courts can take from several months to two years, depending on the complexity of the case. Proceedings resulting from customs or market inspection seizures have immediate effect, but need to be justified through a ruling in favour of the rights holder in certain cases where the importer or distributor objects to the seizure.
Trademark infringement proceedings are conducted before the Commercial Court or a higher court of general competence (when natural persons are involved) in Belgrade. There are no specialised IP courts; however, at first instance IP infringement matters are dealt with by the district courts. The proceedings are conducted under the rules of general civil procedure. The proceedings are considered urgent; the trial starts a few weeks after the action is filed.
An infringement action may be commenced within three years of the rights holder becoming aware of the infringement and the identity of the infringer, but no later than five years from the date of first infringement.
The following can be sought:
- determination and cessation of the infringement;
- seizure, exclusion from commercial channels, destruction or alteration of the infringing goods or tools and equipment used in the infringement or to manufacture the infringing goods;
- compensation for damages, material and immaterial – the material damage cannot be lower than the fee for legal use of the right, while in cases of gross negligence, the compensation may be in the amount of the income that the infringer acquired from the infringement
- legal costs and expenses;
- publication of the court decision; and
- disclosure of information about third parties involved in the infringement, origin and distribution channels of the infringing goods or services.
First-instance decisions can be appealed. An extraordinary legal remedy revision to the Supreme Court of Cassation is allowed against second-instance decisions in infringement matters.
Upon justified request, the court may order the securing of evidence, the seizure or removal from circulation of infringing products or an injunction forbidding the continuation of infringing activities. Where the marks are identical, the court is obliged to issue an injunction.
Contesting trademark registration
If a trademark application was filed against the principle of good faith, or if a trademark registration was based on such application or in violation of legal or contractual obligations, anyone whose legal interest has been violated as a result may contest the registration in court. Such an action cannot be filed more than five years after the trademark was entered in the Trademark Register.
Related administrative proceedings
Administrative proceedings can be related to court infringement proceedings where invalidation or revocation of the mark is considered an interlocutory question in litigation.
Unfair competition action
Unfair competition actions are regulated by the Law on Trade, which prescribes activities deemed to constitute acts of unfair competition, including selling goods marked with labels, data or shapes which create justifiable confusion among consumers regarding origin, quality and other characteristics of the goods. In litigation, the determination of an act of unfair competition, forbiddance of further sale, removal of the goods from trade, compensation of damages and publication of the court decision may be claimed, with a possibility to request a preliminary injunction
Customs seizures may be initiated through the prescribed procedure ex officio or at the rights holder’s request. Customs supervision of trademarks is regulated by the Customs Law and regulations on border measures for the protection of IP rights. Such customs protection lasts for one year and may be renewed.
The rights holder may request the direct destruction of seized counterfeit goods within 10 working days, provided that the importer does not object to the seizure. After 20 working days, the infringement and destruction of the counterfeit goods has to be dealt with in court proceedings; failing this, the customs authorities must release the goods for import.
Market inspection seizure
As with the customs action for seizure of imported counterfeit goods, it is possible to temporarily seize counterfeit goods found in trade. Within 15 days, the rights holder may:
- request destruction of the seized goods if the infringer does not object to the seizure; or
- initiate court proceedings to protect its rights.
Violation of rights in company names or other distinctive marks is a criminal act against commerce and will be pursued by the public prosecutor.
The Law on Trademarks sets out fines for corporate trademark infringement offences committed by companies or other legal persons, as well as responsible natural persons within such companies or legal persons. The relevant proceedings are commenced by filing a criminal offence report, although the proceedings are pursued by the public prosecutor. During the procedure, the rights holder may request compensation for damages, but the criminal court usually decides that damages should be claimed and determined in separate litigation.
Copyright infringement action
Copyright infringement is dealt with in proceedings before the courts of general competence. Under certain conditions, copyright infringement can be considered a criminal act. Copyright can serve as a legal basis for customs seizures and market inspection seizures.
Ownership changes and rights transfers
An assignment agreement should be recorded in the Trademark Register in order to have effect against third parties. The request has to be supported by proof of legal title, with any translation certified by a sworn court translator. The original assignment agreement or a certified copy also has to be submitted; for certified copies, apostille or legalisation is required.
Short-form agreements are acceptable. Trademarks may be assigned with or without goodwill or compensation; the agreement has to explicitly state the compensation amount, if any. It may also cover all or only some of the relevant goods or services. However, if the assigned goods or services are essentially similar to those for which the trademark remains registered in the name of the assignor, or if the assignment may create confusion in trade, the assignment may not be approved unless the assignee waives protection for the goods or services for which there is a likelihood of confusion.
A licence may be exclusive or non-exclusive and cover all or only some of the relevant goods or services. It may also be limited to a certain territory or timeframe.
The application for recordal is filed on a prescribed form together with enclosed proof of legal title, with any translation certified by a sworn court translator (it may be partial). Short-form agreements are acceptable. The original licence agreement or a certified copy has to be submitted; for certified copies, apostille or legalisation is required.
Use of the mark by the licensee is considered as use that defends against revocation for non-use. In general, trademark licensees may sue for trademark infringement, unless the licence provides otherwise.
Collective and certification trademarks cannot be licensed.
Trademarks and rights relating to a trademark application may be the subject of a pledge on the basis of a pledge agreement, court decision, decision of the enforcement official or decision of another competent government body in respect of some or all of the relevant goods or services. The pledge may be recorded in the appropriate register of the competent authority on the request of the trademark owner, applicant or pledger.
Company names are regulated by the Companies Act. From 2020, the new Law on Trademarks provide that opposition, under certain conditions, may be filed by a company whose firm name or substantial part of the firm name is identical or similar to the trademark application. Protection against third-party use of a company name may be grounded on the unfair competition rules contained in the Law on Trade. Violation of rights in a company name constitutes a criminal act under certain conditions.
Copyright and trademarks are often related. Certain signs may be subject to simultaneous copyright and trademark protection, in which case these rights have mutual effect. Under certain conditions, copyright can be used as supporting legal grounds in trademark infringement proceedings.
The Law on Trademarks does not regulate online use of registered and unregistered trademarks. The national domains for Serbia are ‘.rs’ and ‘.cp6’. They are registered with the authorised registrar of national domains.
Disputes relating to domain names are resolved before the Serbian Chamber of Commerce and its dispute resolution committee. By initiating proceedings before the committee, the plaintiff accepts the committee’s authority. However, by accepting the committee’s authority, the parties do not waive their right to resolve the dispute before the courts. The committee’s decision can be contested before the courts in Belgrade (the Commercial Court for legal entities; otherwise the Higher Court).