EnforcementTrademark 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:
Procedural format and timing
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.
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.
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.