Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The Law on Trademarks (Official Gazette 104/2009, 10/2013 and 44/2018) is the primary legislation governing trademarks in Serbia.

International law

Which international trademark agreements has your jurisdiction signed?

Serbia has signed the following international agreements:

  • the Nice Agreement on the International Classification of Goods and Services (Nice Agreement);
  • the Vienna Agreement on the International Classification of the Figurative Elements of Marks;
  • the Madrid Agreement on the International Registration of Trademarks;
  • the Protocol Relating to the Madrid Agreement on the International Registration of Marks;
  • the Nairobi Treaty on the Protection of the Olympic Symbol;
  • the Trademark Law Treaty; and
  • the Singapore Treaty on the Law of Trademarks.
Regulators

Which government bodies regulate trademark law?

The Intellectual Property Office of Serbia is the main body regulating trademark law. The relevant legislation is enacted through the Serbian National Assembly.

Registration and use

Ownership of marks

Who may apply for registration?

Any natural or legal person, both domestic and foreign, may apply for registration.

Scope of trademark

What may and may not be protected and registered as a trademark?

Any sign capable of being represented graphically may be protected by a trademark provided that such signs are capable of distinguishing in the course of trade the goods or services of one natural or legal person from the goods or services of another natural or legal person.

A sign may comprise, among other things:

  • words;
  • slogans;
  • letters;
  • numbers;
  • images;
  • drawings;
  • combinations of colours;
  • three-dimensional shapes;
  • combinations of such signs; and
  • graphically presentable musical notes.
Unregistered trademarks

Can trademark rights be established without registration?

Only a well-known mark be established without registration, under certain conditions.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

A famous foreign trademark can be afforded protection even if not used domestically, if it is determined domestically famous. In establishing whether the trademark is famous the familiarity of the relevant part of the public with the trademark shall be taken into account, including their familiarity with the trademark as a consequence of promotional activities in respect of the trademark. The owners of famous marks may enjoy broader protection (ie, protection for goods and services not covered by the registration.

The benefits of registration

What are the benefits of registration?

Trademark registration gives the proprietor the right to exclusive use of the mark in respect of the goods or services covered by it. A registered trademark provides its holder with remedies against unauthorised use since a trademark holder can sue for infringement and obtain remedies such as, amongst other, recall of infringing objects from the channels of commerce, destruction of infringing articles and damages.

Trademark registrations are identifiable property that can be transferred in its own right, like any other asset owned by a person or a company. A registered trademark can be pledged as security and can be licensed. A trademark licence can be recorded on the trademark register, giving the licensee rights to institute legal proceedings in the event of infringement.

A registered mark can be found when others search the official register before choosing to commence using a particular name.

In legal proceedings relating to trademarks a trademark registration is accepted as evidence of validity of the registration and the rights conveyed by registration.

A trademark registration offers its owner the possibility of establishing the customs watch as an enforcement mechanism against importation of unauthorised goods.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The documentation needed to file a trademark application is request for the trademark registration, including representation of the mark for which protection is requested, list of goods or services to which the mark relates and proof of payment of the fee for trademark application. Power of attorney is necessary only if the application is filed via a representative. The representation of the mark in the application is governed by the regulation on the content of the register of applications and the register of trademarks, the content of requests and proposals submitted in the procedure for recognition and protection of trademarks, and the information published in the official gazette of the competent authority. Electronic filing is available. A trademark search before filing is available but not mandatory.

When applying for a trademark search, the applicant should submit a search request consisting of a sign that the search is to be carried out for and number of classes of the international classification of goods and services under the Nice Agreement. The official fee for this service is 2,000 Serbian dinars (€17). This amount refers to one sign pertinent to up to three classes of the international classification of goods and services under the Nice Agreement. For each subsequent class after the third, an additional surcharge of 300,00 Serbian dinars (€2,500) is incurred.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

It typically takes about nine months to obtain a trademark registration. The official fee for registration of a word trademark in up to three classes is €287. Each additional class costs another €37, and the same fee applies to the registration of a figurative trademark. The right to a trademark is acquired by entry into the Register of Trademarks and is effective as of the filing date of the application. The circumstances that could increase the estimated time and cost of filing a trademark application and receiving a registration include:

  • an incomplete application;
  • an observation claim filed by the prior registrant; and
  • a negative search report from the Intellectual Property Office, etc.
Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The Intellectual Property Office uses the tenth edition of the Nice Classification, version 2016.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

When the trademark application is submitted, IP officers will check to ensure that the application has all the required elements. If any element is missed, the applicant will be asked to complete the application. After completing the application, it will be marked with an identification number (a Ž number) with the filling date and entered into the Trademark Application Register. The filling date is the priority date.

Next, the application will be formal and substantive, examined in the Trademark Department. A formal examination means that if the application is not submitted in an orderly manner, the IP office shall notify the applicant in writing requesting the application be regularised within a time limit of between 15 to 30 days, determined by the competent authority, asserting the reasons for such request. Where the applicant fails to regularise the application or does not pay the regularisation fee within the prescribed time limit, the competent authority shall decide to reject the application. Formal examination is followed by the substantive examination. Where the application is submitted in an orderly manner (or the applicant regularises the application), it will be substantively examined. If the IP office establishes that an application is not eligible for the grant of trademark, it shall notify the applicant in writing giving its reasons as to why the trademark cannot be granted, and it shall invite the applicant to submit its observations about such reasons within a time limit of up to 30 days. If the applicant fails to submit its observations or they submit it and the IP office still deems neither the application nor the grant of trademark ineligible, the IP office shall refuse a trademark application as a whole or in respect of certain of the good or services.

An appeal may be filed against every IP office decision by which the proceeding is finalised, within a term of 15 days from the receipt of the decision. The appeal is dealt with by the governmental Administrative Commission. Administrative proceedings against an Administrative Commission decision may be instituted within a term of 30 days from the date of receipt of the Administrative Commission’s decision.

If the application meets requirements for the registration of a trademark, the IP office shall request the applicant pay a fee for the first 10 years of protection and the costs of publication of the trademark and to furnish the evidence of payment. The IP office shall render a decision staying such proceedings if the applicant does not furnish the evidence of the payment within the specified time limit.

When the applicant submits the evidence of fee payment, the IP office shall enter the recognised right together with the prescribed data in the Trademark Register and issue a trademark registration certificate to the rights holder. The trademark registration certificate shall be considered to be a decision in an administrative procedure.

Letters of consent are acceptable in order to overcome an objection based on a third-party mark.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

The use of a trademark or service mark does not have to be claimed before registration is granted or issued. At the request of an interested party, the competent authority may issue a decision on revocation of a trademark if the holder of the trademark or a person authorised by them fail, without a justified reason, to seriously use trademark on the domestic market for marking of goods or services comprised, for an uninterrupted period of five years as of the day on which the trademark was entered in the Trademark Register or from the day of its last use. During the proceedings for termination of a trademark due to its non-use, the trademark holder or a person authorised by them must prove that the trademark has been used.

Any legal or natural person who has filed an orderly trademark application effective in any country member of the Paris Union or the World Trade Organization shall be granted a right of priority in Serbia as of the filing date of the original application, provided that an application for the same trademark is filed in Serbia within six months from the effective date of the application in the concerned country.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking is not regulated by the Serbian law. There are no official symbols that should be used to indicate trademark use or registration of a trademark. However, marking is not prohibited.

Appealing a denied application

Is there an appeal process if the application is denied?

An appeal may be filed against any IP office decision by which the proceeding is finalised, within a term of 15 days from the receipt of the decision. The appeal is dealt with by the Administrative Commission. Against the decision of the Administrative Commission, administrative proceedings may be instituted within a term of 30 days from the date of receipt of the Administrative Commission’s decision.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

There is no opposition system in Serbia. Third parties may file an observation claim, bringing their prior trademark to the examiner’s attention; however, they do not become a party in a proceeding.

The trademark registration may be declared invalid in whole or for some goods or services comprised if it is determined that, at the time of issuance of the decision, the requirements for trademark registration prescribed by this law have not been met. This means that the primary bases for such challenges include following situations:

  • where the mark is identical with a protected trademark for identical goods or services;
  • where the mark is identical to an earlier protected trademark of another person for a similar type of goods or services, or which is similar to an earlier protected trademark of another person for an identical or similar type of goods or services, if such identicalness or similarity are likely to cause confusion in the relevant part of the public, including the likelihood of association of that trademark with the earlier protected trademark; and
  • where the mark is identical or similar to a sign of another person for identical or similar goods or services, which is well-known in Serbia within the meaning of article 6bis of the Paris Convention, ie, with a well-known trademark, and regardless of the goods or services concerned, when the mark is a reproduction, imitation, translation or transliteration of a registered trademark of another person, or the essential segment thereof, which is known without any doubt to those participating in the commerce in as a trademark of widespread reputation (famous trademark) used by other persons for marking their or services, if the use of such a trademark would result in an unfair benefit from the reputation acquired by the famous trademark or in harm to its distinctive character or reputation.

The procedure for declaring a trademark invalid shall be initiated on the basis of a written request for a declaration of invalidity of the trademark.

If an application was filed in contravention to the principle of a good faith or if a trademark was registered on the basis of such an application or on the basis of an application being a breach of a legal or contractual obligation, any person whose legal interest has been violated therefrom may request the court to declare such person as an applicant, or the rights holder.

The official fee for the observation claim is 310 Serbian dinars (€2.50).

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

The duration of a trademark is 10 years from the date of filing the application, and its validity may be renewed for an indefinite number of times on the filing of a request and payment of the prescribed fee.

No proof of use is required for maintenance of the trademark.

Surrender

What is the procedure for surrendering a trademark registration?

Trademark rights can be terminated before the expiry of the 10-year validity period if the trademark owner surrenders its right. The rights will expire on the day after the owner submits the declaration of surrender to the IP office.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Only if the sign complies with the requirements for other IP rights.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

There is no special regime for the protection of trademarks online. The usual regime governs both online and non-online trademarks. Domain names are protected before the Serbian Chamber of Commerce and Industry's Committee for the Resolution of Disputes Relating to the Registration of National Internet Domains. Dispute proceedings are conducted according to the Rules for Proceedings for the Resolution of Disputes Relating to the Registration of National Internet Domains (RNIDS), approved by the RNIDS Conference of Co-founders.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A trademark owner or applicant may, on the basis of a licence agreement, grant a licence for the right to use the trademark or for the rights arising from the application in respect of all or some of the goods or services.

Provisions covering the following areas are typically included:

  • duration of the agreement;
  • the form covered by the registration in which the mark may be used;
  • the territory in which the mark may be affixed;
  • the scope of goods and services for which the licence is granted;
  • the licence fee;
  • whether the licence is exclusive or non-exclusive;
  • quality control; and
  • possible permissions to sublicense.
Assignment

What can be assigned?

A trademark with or without goodwill may be assigned to another party in respect of some or all of the goods or services for which it is registered or applied.

Other business assets must not be assigned to make it a valid transaction.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

The documents required for the assignment are:

  • the document that represents a legal basis for the assignment (eg, agreement and administrative decision);
  • consent of the holder for the assignment (simply signed);
  • a signed power of attorney (if the application is submitted through a representative); and
  • fee proof of payment.
Validity of assignment

Must the assignment be recorded for purposes of its validity?

The assignment of rights will be recorded in the appropriate register of the competent authority on the request of the trademark owner or assignee.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

A trademark or the rights granted by a trademark application may be the subject of a pledge on the basis of a pledge agreement, court decision or a decision by the competent administrative body in respect of some or all of the goods or services.

The pledge agreement must be drawn up in writing and contain:

  • the date of the signing, and the name and surname or company title of the signing party;
  • the domicile, residence or business seat of the contractual parties as well as the pledgee, if it is not the same party;
  • the trademark registration number or the number of the trademark application; and
  • information about the claim secured by the right of pledge.

The pledge must be recorded in the appropriate register of the competent authority on the request of the trademark owner or applicant or the pledger.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

There are legal, administrative and criminal proceedings available to enforce the rights of a trademark.

Both general and commercial courts are competent, but there is no special court competent for trademarks or intellectual property only.

Article 238 (Unauthorised Use of Another's Business Name or other Special Mark for Goods or Services) of the Criminal Code prescribes the following:

Whoever, with intent to deceive buyers or users of services uses another’s business name, another’s geographical indication of origin, another’s hallmark or trademark or another’s special mark for goods or services or incorporates certain features of these indications or marks into their business name, their geographical indicator of origin, their hallmark or trademark, or into their other special mark for goods or services shall be fined or punished with imprisonment of up to three years.

Whoever, for the purpose of sale in larger quantity or value obtains, produces, processes, puts into circulation, rents or stocks goods specified in paragraph 1 of this article or engages in extending services by using another's marks without authorisation, shall be punished by imprisonment from six months to five years.

A perpetrator specified in paragraph 2 of this article who organised a network of resellers or middlemen or has acquired material gain exceeding 1.5 million Serbian dinars, shall be punished by imprisonment from one to eight years.

Items specified in paragraphs 1 through 3 shall be seized.

Procedural format and timing

What is the format of the infringement proceeding?

Trademark infringement procedure is governed by the Civil Procedure Law. The procedure allows for written evidence, live testimonies, discoveries and experts.

The case is decided by a single judge in the first instance, usually taking between 12 to 36 months for the court to decide; however, the exact duration depends on the complexity of the case.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof rests on both parties. Namely, the claims of one party should be proven by such a party, with the exception of a negative claim. In the latter case, the burden of proof is on the opposite party.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

A trademark owner, an applicant and the holder of an exclusive trademark licence can seek both remedy for an alleged trademark violation and a criminal complaint.

An infringement action may be filed within a period of three years as from the day on which the plaintiff became aware of the infringement and the infringer, but not later than five years from the day of the first infringement.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The rights holder may file a request for customs application at the Customs Office specifying information on the goods and contact details of persons to be notified in the event of a suspicion that goods are infringing IP rights. The procedure for implementing the measures can be initiated at the request of the rights holder or ex officio. In the event of a suspicion of infringement, the goods are to be temporarily suspended. If the importer of the seized goods does not agree with the destruction of the goods, the rights holder must file an infringement action with the competent court within 10 days from the day on which they were informed about the objection, otherwise the goods will be released.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

In a trademark infringement procedure, the plaintiff may request from the competent authorities the provision of information on the origin and distribution channels of the goods infringing their trademark.

If a proceeding party refers to a document and claims that it is within the possession of the other party, the court shall order that party to present the document and determine a time limit for it to comply.

A party may not deny to submit a document if it referred to such document as to corroborate its own allegations, or if it is incumbent upon a party to submit or present such document pursuant to law, or if the document is deemed to be common to both parties, with respect to its content.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The first instance proceedings usually last from one to two years, depending on the complexity of the case. The same goes for the appeal. It usually takes between two to three months for the court to decide in a preliminary injunction.

Limitation period

What is the limitation period for filing an infringement action?

An infringement action may be filed within a period of three years as from the day on which the plaintiff became aware of the infringement and the infringer, but not later than five years from the day of the first infringement.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs of the first instance proceedings would amount to approximately €1,500 to €3,000. The losing party should reimburse the costs to the succeeding party to the amount dependent on a percentage of the success.

Appeals

What avenues of appeal are available?

An appeal can be filed against the first instance verdict to the Appellate Court or Commercial Appellate Court.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Alleged infringers can defend themselves in infringement proceedings by claiming that:

  • they are using their own trade name, acquired conscientiously before the priority date of the plaintiff’s trademark;
  • the plaintiff’s trademark rights are exhausted;
  • they are using their own name or address in the course of trade in accordance with good business practices;
  • they are using the sign as an indication of the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services, or, where the sign is a registered trademark, as a necessity to indicate the intended purpose of the goods or services, in particular where spare parts or accessories are concerned;
  • they are using their own registered mark;
  • there has been continued use or prior use of the mark in good faith and without opposition from the title holder - in other words, the statute of limitations has expired;
  • the marks are dissimilar and there is no likelihood of confusion; or
  • the goods or services in relation to which they are using the mark are dissimilar to those covered by the plaintiff’s trademark, unless the plaintiff’s trademark is well known.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The following remedies are available to a successful party in an action for infringement or dilution:

  • determination of the infringement;
  • termination of the infringement;
  • confiscation, exclusion from the channels of commerce, destruction or alteration of the infringing objects without any compensation;
  • confiscation, exclusion from the channels of commerce, destruction or alteration of the tools and equipment used to manufacture the infringing objects, without any compensation if necessary for the protection of rights;
  • reimbursement of damages caused by the infringement of rights and justifiable legal costs and expenses;
  • publication of the court decision at the expense of the defendant; and
  • supplying of information about third parties participating in the infringement of rights.

Any infringer shall be liable for the damages in accordance with the general rules of damages compensation.

If the infringement has was committed intentionally or by gross negligence, the plaintiff may instead of the reimbursement of damages caused by the infringement of rights and justifiable legal costs and expenses claim up to three times the amount of licence remuneration they would usually receive for the use of trademark.

In considering these claims, the court shall take into account the proportionality between the seriousness of the infringement and the requested measures and the interests of the third parties.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Pursuant to the Civil Procedure Law, prior to and pending the proceedings, the parties and the court shall endeavour to settle civil disputes through mediation or in other amicable manner.

However, ADR procedures are not frequent in Serbia. Benefits include lower attorney fees, faster issuance of decisions and flexibility in settlements, while the risks include no legal remedies (binding decisions), and lower compensation amounts.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

None.