Registration and useOwnership of marks
Who may apply for registration?
A procedure for acquiring a trademark right may be initiated by a legal entity and a natural person.Scope of trademark
What may and may not be protected and registered as a trademark?
Any sign that may be represented graphically and that is capable of distinguishing the goods or services of one undertaking from those of other undertakings may be registered as a trademark. A trademark shall protect in particular words, letters, numerals, pictures, drawings, combinations of colours, three-dimensional forms, including shapes of goods or their packaging, as well as combinations of all of the above - as long as they are distinctive.
Service marks and collective or certification also can be registered.Unregistered trademarks
Can trademark rights be established without registration?
The rights of an unregistered mark can be established either by the Industrial Property Office concluding that a trademark is a well-known mark in the course of an opposition or cancellation procedure, or by a court of law (ie, to be considered as a trademark rights).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?
Macedonian jurisdiction distinguishes well-known trademarks and trademarks with reputation (not famous trademarks in particular).
The well-known trademarks and the trademarks with reputation do not have to be used domestically, but they must be well known to the domestic consumers. The best way to prove it is to conduct a survey. The well-known trademarks and the trademarks with reputation have the same rights as the registered trademarks.
The marks with reputation enjoy wider protection than registered trademarks since protection extends to goods and services not covered by their registration.The benefits of registration
What are the benefits of registration?
A registered trademark holder has the rights:
- to use its trademark;
- to prohibit the violation of its right;
- to ban any actions that are violating its right;
- to claim reimbursement of any damages that have occurred through the violation of its rights intentionally or by negligence;
- to request the confiscation or destruction of the products produced or put in circulation by the violation of the right and of assets used for their production (by the courts, market inspectorate and customs office);
- to submit the documentation and data of the person violating the right; and
- to seek civil punishment.
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 trademark application must include:
- information concerning the applicant;
- a description or depiction of the sign; and
- a list of goods and services for which protection is sought.
Apart from the above mandatory elements, the application should also contain:
- information concerning the common representative if there are several applicants;
- the general act governing a collective trademark or rules for using a certification trademark if the application concerns a collective or certification mark;
- proof of priority if priority is claimed; and
- a power of attorney if the application is filed through an agent.
The representation of the mark is governed by the Rulebook of trademarks and the Law on Industrial Property.
Electronic filing is not available yet.
Trademark searches before filing are available at the official site of the Industrial Property Office for the Nice Classification only, but not for the Vienna Classification. A trademark search can also be required before filing an application with the Industrial Property Office.
The following is an overview of official search fees in databases for a sign in one to three classes:Search for a word markType of search
- search for an identical trademark: €9; and
- search for a similar trademark: €12.
- search for an identical trademark: €12; and
- search for a similar trademark: €15.
- search for an identical trademark: €15; and
- search for a similar trademark: €19.
For all listed items, the search fee increases by €3 per additional class after the third class.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?
The usual time frame from filing to registration is 8 to 24 months.
The fees for registration of a trademark are €67 plus a €6 publication fee.
A trademark registration formally comes into effect on the day of entry in the trademark register. The date of registration is the date of the decision to grant the trademark.
Most commonly, the estimated time and costs can be increased if the application is temporary refused on absolute grounds by the examiner or if a third-party files opposition on relative grounds.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 Nice Classification is used and it does not differ from the international classification system.
Multi-class applications are available.
The official fee for filing a trademark application is €10 for up to three classes and €1.60 for each subsequent class of products and services.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?
The Industrial Property Office conducts a formal examination, ie, checking if the application is correct and contains all the content and attachments provided in the law, in particular:
- information concerning a common representative if there is more than one applicant;
- the general act governing a collective trademark or the rules for using a certification trademark if the application concerns a collective or certified mark;
- proof of priority if priority is claimed;
- power of attorney if the application is filed through an agent; and
- appropriate fees are paid.
The Industrial Property Office examines the application only on absolute grounds. The examination does not include potential conflicts with other trademarks.
A letter of consent is not used in national practice, because it is enough for the owner of the prior trademark not to file an objection.
If the application is refused on absolute grounds, the Industrial Property Office must inform the owner of the application, in writing, about the grounds for the full or partial exclusion from protection and ask them within a reasonable time period, to make a statement thereof.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 must not be claimed before registration is granted or issued. Proof of use does not have to be submitted either.
Regarding the foreign registration, according to article 178 of the Law on Industrial Property:
Any legal or natural right-owner who had duly filed application in any of the state member of the Paris Union or WTO shall be granted priority right in the Republic of Macedonia from the date of filing the first application if that is claimed within six months of the filing date of the first application; and
The applicant who intends to use the priority right under paragraph (1) of this article shall be obliged in the application filed in the Republic of Macedonia to give all information on the first application (state, date and number of application) and, within 90 days from the date of filing the application, to submit a copy of the first application certified by the competent authority of the state member of the Paris Union or the WTO with which the first application was filed, as well as translation of the first application in the Macedonian language.
The owner is not obliged to use the mark after the registration, but the trademark is vulnerable on non-use grounds after five years of its registration.
The trademark shall cease to be valid when the rights holder, without justified reason, fails to use the trademark for marking the products, ie, services for more than five years in continuity from the date when the trademark has been entered in the register of trademarks, ie, from the date when the trademark was used for the last time.
A cessation of the validity of a trademark procedure referring to non-use grounds can be initiated at the request of the person concerned, and not ex officio by the Industrial Property Office or any other state authority.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?
The holder can use the ® sign next to the trademark as indication that this trademark is registered. Marking is not mandatory. There is no legal difference if the owner uses his trademark with or without the marking symbol.Appealing a denied application
Is there an appeal process if the application is denied?
The unsatisfied party can initiate a court procedure before the Administrative Court against the final decision by the Industrial Property Office.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?
Applications are published for opposition. Opposition to a published trademark application may be filed within 90 days from the publication date.
A published trademark application can be opposed on relative grounds.
The cost of filing an opposition against the published application is 1,500 denars (€25).
After the registration, a third party can file for a warrant of invalidation.
A registered trademark can be opposed on absolute or relative grounds.
The cost for a warrant of invalidation of a registered trademark is 3,000 denars (€50).Legal provision and third-party intervention
- once the application is published, any legal or natural person may send the Industrial Property Office a written intervention explaining the absolute reasons for which they consider the filed sign may not be granted;
- the persons referred to in paragraph (1), article 178 of the Law on Industrial Property shall not be parties in the procedure; and
- the intervention referred to in paragraph (1), article 178 of the Law on Industrial Property shall be sent, by the Industrial Property Office, to the applicant, who may provide answers to the suggestions.
A trademark owner can oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection but has a low chance of success if they doe not prove copyrights or the well-known character of their trademark.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?
A trademark is valid for 10 years from the date of filing the trademark application. A trademark may be renewed an indefinite number of times if the trademark applicant files a request for a renewal of the trademark and pays the corresponding fee and procedural expenses during the last year of the 10-year term of protection or no later than nine months after the expiration of the validity.
The use of the trademark is not required for its maintenance.Surrender
What is the procedure for surrendering a trademark registration?
The rights holder should file a written statement with the Industrial Property Office surrendering the right of the trademark.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Yes.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The protection of trademarks in domain names is prescribed by:
- the rulebook for organising and managing the top Macedonian internet domain .mk in the world wide web using the subdomain below it; and
- the Law on Copyrights and related rights.