New Serbian draft trademark law, which aims to introduce the opposition system, has been up for public discussion since December 3, 2015. After the public discussion ends on December 30, 2015, the draft law with the remarks will be sent to the government for consideration and then it will enter the parliamentary procedure. We expect that the new trademark law will be adopted soon. If adopted, the main changes that the new law would bring are as follows:
Under the current law, the Serbian IPO can consider the written observation of any interested party that objects to the registration of a trademark on both absolute and relative grounds for refusal. Although trademark examiners are not required to take written observations into consideration, they have generally seriously considered them.
Under the draft law, any natural or legal person can file a written observation, only on absolute grounds, within three months from the trademark application’s publication date. This person does not become party to the proceedings. The IPO must take the written observation into consideration and send it to the applicant, who may then submit a written response within 15 days.
According to the draft law, the IPO will conduct formal and substantive examinations on absolute grounds. The substantive examination on relative grounds (earlier rights) will be conducted only if an opposition is filed. Namely, the holder of an earlier trademark or a well-known trademark (regardless of the list of goods/services), the licensee, or the holder of the earlier right to an individual’s name or image, copyright or industrial property right, can file an opposition based on relative grounds for refusal within three months from the application’s publication date. The trademark will not be refused if the holder of the earlier trademark or earlier right explicitly consents to the registration of the later mark. Therefore, the draft law clearly separates the absolute and the relative grounds for refusal.
Obtaining trademark registration certificate is optional under the new draft law. The certificate is issued at the request of the trademark holder and upon filing the proof of payment of the prescribed fee.