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Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

Yes. There is no need for notarisation or legalisation.

What information and documentation must be submitted in a trademark registration application?

The trademark application must include:

  • a request for recognition of the trademark right;
  • information concerning the applicant;
  • a description/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.

What rules govern the representation of the mark in the application?

 The representation of the mark is governed by the Rulebook of Trademarks and the Law on Industrial Property.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

 Formally, yes; however, it is inapplicable in practice as the relevant software has not yet been installed.

What are the application fees?

The official fee for filing a trademark application is €10, for up to three classes, and €0.80 for each subsequent class of products and services

Priority

How are priority rights claimed?

The applicant shall acquire priority right as from the date of filing of the application over any applicant filing a later trademark application for an identical or similar sign and identical or similar goods or services.

Union priority right: Any legal entity or individual rights owner that had duly filed an application in any of the state member of the Paris Union or World Trade Organisation (WTO) shall be granted priority right in Macedonia from the date of filing of the first application if that is claimed within six months of the filing date of the first application. The applicant that intends to use the priority right must:

  • give all information regarding the first application (state, date and number of application) in the application filed in Macedonia; and
  • within 90 days of the date of filing the application, submit a copy of the first application certified by the competent authority of the state member of the Paris Union or WTO with which the first application was filed, as well as a translation of the first application in the Macedonian language.

Exhibition priority right: A rights owner that exhibited goods or services marked by a specific sign at an officially recognised international exhibition or fair in Macedonia or in any member state of the Paris Union or the WTO may request, when filing an application, that the date of exhibition of the goods or rendering of the services be accorded as the priority date, as long as the trademark application is filed within three months of the date of the closing of the exhibition or fair. The application shall be accompanied by a certificate issued by a competent authority of the state member of the Paris Union or WTO proving that the exhibition or fair was recognised within the meaning of the Convention for International Exhibitions and indicate the type of exhibition or fair, its place, its opening and closing dates and the first day of exhibiting the goods or rendering the services specified in the application.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Trademark searches are available before filing on the official site of the Industrial Property Office for the Nice Classification only, and not for the Vienna Classification. A trademark search also can be required before filing an application with the Industrial Property Office.

 Below is an overview of official search fees in databases for a sign in one to three classes:

Search for a word mark

Type of search

Fee

Search for identical trademark

9 €

Search for similar trademark

12 €

 

Search for a figurative mark

Type of search

Fee

Search for identical trademark

12 €

Search for similar trademark

15 €

 

Search for a combined mark (word and figurative)

Type of search

Fee

Search for identical trademark

15 €

Search for similar trademark

19 €

 

For all listed items, the search fee increases by €3 per additional class after the third class.

Examination

What factors does the authority consider in its examination of the application?

If the application contains the mandatory information, the Industrial Property Office will notify the applicant of the date of filing and the application is entered in the register of trademark applications. An application will be published in the office’s Official Gazette 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; and
  • a power of attorney if the application is filed through an agent; and
  • the appropriate fees are paid.

Does the authority check for relative grounds for refusal (eg, through searches)?

No, the Industrial Property Office does not check relative grounds for refusal, only absolute ones.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

If the application fails to provide all the information required by law and the office raises objections on that basis, the office will inform the applicant of the application’s shortcomings and invite it to correct the identified defects within 30 days. If the applicant corrects the deficiencies by the deadline, the office will determine the date of submission of the application as the date of the correction submission.

Can rejected applications be appealed? If so, what procedures apply?

 Where an applicant fails to submit corrections to its application within 30 days of receipt of the invitation to do so, the application will be considered withdrawn and a decision will be made for rejecting the application. The applicant may initiate an administrative dispute against that decision.

Registration

When does a trademark registration formally come into effect?

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.

What is the term of protection and how can a registration be renewed?

A trademark is valid for 10 years from the date of filing the application. The validity of the trademark can be extended an unlimited number of times for a period of 10 years if the holder, during the last year of validity or at the latest nine months after the expiration of the validity, files an application for renewal and pays the appropriate fees and costs. The new period of protection begins the day after the last day of the previous 10-year protection period. When the request for the extension of the validity of the trademark covers only part of the goods or services for which the trademark was registered, the validity of the trademark is extended for those goods or services only.

What registration fees apply?

 The fees for registration of a trademark are €67 plus €6 of publication fee.

What is the usual timeframe from filing to registration?

The usual timeframe from filing to registration is eight to 24 months.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

 The applicant of an earlier-filed application, registration and/or owner of an earlier acquired IP right can oppose a published application on the basis of these earlier rights.

Any legal entity or individual may send to the Industrial Property Office a written request setting out the absolute grounds for refusal that it considers make the mark unregistrable. In other word, while a third party cannot formally oppose an application, it can point out in writing the deficiencies of the application regarding absolute grounds for refusal.

What is the usual timeframe for opposition proceedings?

This depends on many factors, but opposition proceedings typically last at least four years.

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes, opposition decisions are subject to appeal. Either party shall have the right to initiate an administrative dispute against the decisions of the Industrial Property Office before the Administrative Court. The lawsuit shall be filed within 30 days from the day the complaining party has received the (opposition) decision from the office.

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