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?

In cases of trademark infringement, civil and criminal actions can be taken.

According to the Trademark Law, a trademark owner may file an infringement lawsuit requesting that the court establishes trademark infringement; hence, this is a court proceeding. An infringement lawsuit must be filed within five years beginning from the date of infringement. The competent court is the Commercial Court of Montenegro.

The Criminal Code prescribes the unauthorised use of another party’s name as a criminal act and determines that if someone serves another’s company, geographical indication or trademark, or imposes certain features of these marks in their company or trademark, in order to deceive consumers or users of services, then they will be punished by a fine or up to three years’ imprisonment.

Procedural format and timing

What is the format of the infringement proceeding?

Infringement proceedings are held in court; therefore, it is permissible to invite witnesses, experts, etc. As court proceedings, a judge decides the case in the first instance (it is possible to file appeal against the first instance decision before the Court of Appellations). The usual time frame for an infringement action is six to 24 months.

The Criminal Code of Montenegro prescribes that anyone who, with the intention to deceive buyers or users of services, uses another's company name, another's geographic mark of origin, another's seal or trademark or another’s special mark for goods or includes particular features of these marks into their firm, their seal or trademark or into their special mark of goods, shall be punished by a fine or imprisonment for a maximum term not exceeding three years.

Criminal enforcement procedure is commenced by filing a criminal charge before Ministry of Internal Affairs - Police Administration, who shall investigate and collect all necessary evidence. The State Prosecutor shall decide whether to commence criminal proceedings.

Burden of proof

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

During infringement proceedings, the burden of proof is on the plaintiff; however, a judge in charge can ask that evidence from both parties be submitted. There is no specific burden of proof, but usually photographs related to the specific infringement are submitted.

Standing

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

In civil proceedings, a trademark owner may seek a remedy for an alleged trademark violation and such remedy has to be supported with evidence related to the infringement. In criminal proceedings, any interested party may seek remedy for an alleged trademark violation.

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?

In order to stop the import and export of infringing goods, the customs authorities can take action ex officio or based on valid customs surveillance.

In case of an ex officio action, the customs authorities will temporarily seize the goods and notify the trademark owner about the seizure, the suspicion that its rights may have been infringed and the possibility of filing an application for customs surveillance within four working days of notifying the rights holder.

If the rights holder files an application for customs surveillance, the goods will remain detained by customs authorities until a decision on the application for the customs surveillance is issued. If the customs surveillance is granted, the goods will be detained for another 10 working days and the procedure is then the same as where the customs surveillance was previously established.

If the customs surveillance is already in place, the customs authorities shall notify the rights holder and request confirmation of the suspicion that the seized goods are infringing its trademark rights. The deadline for informing the customs authorities about the nature of the seized goods is 10 working days beginning from receipt of the notification. Once the rights holder confirms that the seized goods are infringing its trademark rights and no objection was filed by the importer in the meantime, then the customs authorities shall grant the destruction of goods under the simplified procedure. If the importer objects, customs shall notify the rights holder who has 10 working days to file an infringement lawsuit before court and to inform the customs authorities accordingly.

Discovery

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

During court infringement proceedings, if a party refers to certain evidence, claiming that it is with the other party or under the other party's control, the court shall invite that party to submit such evidence within a specified time period. When the plaintiff makes it probable in the filed infringement lawsuit that the trademark infringement occurred when carrying out economic activity to obtain commercial or economic benefit, the court shall require the defendant to provide banking, financial and similar business documents, papers and other evidence found at or under the defendant's control, within a specified time period. If the party that has been requested to submit evidence denies that this evidence is in their possession or under their control, the court may question this and request the defendant present evidence related thereto.

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?

Approximately three to six months.

Limitation period

What is the limitation period for filing an infringement action?

Five years as from the first infringement action.

Litigation costs

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

Every court case experiences different costs, both in the value of the case and the duration of the litigation. The official court fees for first-instance court proceedings range from €20 to €1,500. A similar fee range exists for second-instance court proceedings. Costs' awards differ from case to case; sometimes success in the proceedings has no effect in recovering the costs. The presiding judge may award the procedural costs to the successful party or that every party bears its own procedural costs.

Appeals

What avenues of appeal are available?

Each appeal proceeding is held at a second-instance court, so it is possible to file the appeal before the Court of Appellations. An appeal is filed through the Commercial Court, which is a first-instance court.

Defences

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

Alleged infringers can claim the following defences in infringement proceedings:

  • the defendant is using its own trade name, which was acquired conscientiously before the priority date of the plaintiff’s trademark;
  • the plaintiff’s trademark rights are exhausted;
  • the defendant is using, in accordance with good business practices and in the course of trade:
    • its own name or address;
    • indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services; or
    • a sign that is protected by a trademark where its use is necessary to indicate the intended purpose of the goods or services - in particular, where spare parts or accessories are concerned;
  • the defendant is using its own registered mark;
  • there has been continued use or prior use of the mark in good faith and without objection from the rights holder (ie, the statute of limitations has expired);
  • the marks are dissimilar and there is no likelihood of confusion; and
  • the goods or services in relation to which the disputed mark is used 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?

According to the Trademark Law, it is possible for the plaintiff to request reimbursement of procedural costs, payment of monetary compensation to the trademark holder, destruction of infringing items on the expense of defendant, publication of the judgment, etc.

On the other side, the Criminal Code prescribes a fine or imprisonment up to three years.

ADR

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

ADR techniques are available. Cease-and-desist letters are one ADR technique typically used, and have proven to be productive. Specifically, after sending a cease-and-desist letter, the parties usually sign an amicable out-of-court settlement.