Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

Trademarks in Montenegro are governed by the following legislation:

  • the Trademark Law (Official Gazette of Montenegro No. 72/2010);
  • the Laws on Amendments to the Trademark Law (Official Gazette of Montenegro Nos. 44/2012, 18/2014, 40/2016 and 2/2017); and
  • the Regulation on the Procedure of Granting, Changing, Renewing and Internationally Registering Trademarks (Official Gazette of Montenegro No. 50/2011).
International law

Which international trademark agreements has your jurisdiction signed?

Montenegro has signed:

  • the Madrid Agreement Concerning the International Registration of Marks (3 June 2006);
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (3 June 2006);
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) (3 June 2006);
  • Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (9 March 2012);
  • the Paris Convention for the Protection of Industrial Property (Paris Convention) (3 June 2006);
  • the Trademark Law Treaty (3 June 2006);
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights (29 April 2012);
  • Convention Establishing the World Intellectual Property Organization (3 June 2006);
  • the Stabilisation and Association Agreement between the European Communities and their Member States of the one part, and the Republic of Montenegro, of the other part (1 May 2010);
  • the Interim Agreement on Trade and Trade-Related Matters between the European Community, of the one part, and the Republic of Montenegro, of the other part (1 January 2008);
  • the Free Trade Agreement between the European Free Trade Association States and Montenegro (1 September 2012); and
  • the Central European Free Trade Agreement Secretariat (26 July 2007).
Regulators

Which government bodies regulate trademark law?

The government body regulating trademark law is the Ministry of the Economy (through its Directorate for the Internal Market and Competition and Direction for Intellectual Property).

Registration and use

Ownership of marks

Who may apply for registration?

Any domestic or foreign physical or legal entity may register a trademark (in case of a foreign physical or legal entity, applications must be filed through an authorised representative or attorney at law).

Scope of trademark

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

The following marks are registrable:

  • words;
  • slogans;
  • letters;
  • numbers;
  • images;
  • drawings;
  • colours;
  • colour combinations;
  • three­dimensional shapes;
  • musical phrases represented by musical notes; and
  • any combination thereof.

Collective marks are registrable; however, certification marks are not.

Unregistered trademarks

Can trademark rights be established without registration?

Legal protection of unregistered trademarks is available under article 6-bis of the Paris Convention. Rights of unregistered well-known marks are established on the basis of evidence submitted before the local intellectual property office that prove that the marks are well-known. The office takes into account the criteria established in the World Intellectual Property Organization (WIPO) Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks.

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 is afforded protection if it has not been used domestically in Montenegro, provided that such foreign trademark is famous domestically (ie, its well-known status is proved). The office takes into account the criteria established in WIPO's Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (see question 6). In such case, it is possible to base opposition claim on such famous foreign trademark and to claim that the applicant acted in bad faith.

The benefits of registration

What are the benefits of registration?

The benefits of the registration are numerous, besides others, increased remedies in case of infringement, availability of border enforcement mechanisms, possibility of taking legal actions before the court, etc.

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?

At the moment of filing a new trademark application, the following information and documentation is required:

  • the name and address of the applicant;
  • the trademark name or representation of the mark (in the case of a device mark);
  • a list of goods and services according to the eleventh edition of the Nice Classification (Classes 1 to 45);
  • the priority date, country and number of the priority documents and the original priority document (or a certified copy thereof) in case of claiming priority; and
  • original power of attorney signed by the applicant - no notarisation or legalisation is required (the power of attorney can be submitted subsequently).

All aforementioned requirements are prescribed by the regulation of the procedure for registration, recordal, renewal and international registration of trademarks.

Electronic filing is still not available in Montenegro.

Trademark searches are available. They are not required before the filing; however, they are recommendable - this is the only way to find out if some mark is available for use and registration. Trademark searches are conducted officially by the local IP office per verbal marks and trademark holders, while for device marks the local office does not perform official searches. Standard turnaround time is five to seven working days. The official search fees are as follows:

  • a search per verbal mark up to three classes: €20;
  • a search per verbal marks in each additional class: €5; and
  • a search per trademark holder: €30.
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?

Trademark registration takes approximately nine to 12 months.

The official registration fees are as follows:

  • publication of the trademark application: €10;
  • publication of the registered trademark up to three classes: €10;
  • publication of the registered trademark for each additional class: €3;
  • 10 years’ protection for a word mark up to three classes: €80;
  • 10 years’ protection for a device mark up to three classes: €93;
  • 10 years’ protection for each additional class: €13; and
  • issuance of the registration decision: €50.

The registration formally comes into effect as from the moment of registration.

Note that official actions issued by the local office on the basis of formal deficiencies of trademark application, existence of absolute grounds of refusal or submission of opposition claim would increase the estimated time and cost of registering such registration.

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 eleventh edition of the Nice Classification is followed. Multi-class applications are available. Estimated cost savings are considerable; in the case of filing a multi-class application, the basic fee of €60 is paid only once, while the fee for each additional class above Class 3 is €8.

The official trademark application fees are:

  • €60 for a word mark;
  • €68 for a device mark in up to three classes; and
  • €8 for each additional class above Class 3.
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?

An opposition system is adopted, which means that the local IP office examines only absolute grounds for refusal ex officio. Potential conflicts with other trademarks are actually relative grounds for refusal, therefore conflicts are examined only upon filed opposition by interested party. Letters of consent are mentioned in the Trademark Law, but their form and content are not closely regulated. Hence, the letters of consent are accepted by the local IP office as relevant document for amicable settlement of eventual dispute. Yes, applicants may respond to rejections by the trademark office.

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?

Use of a trademark does not have to be claimed before registration is granted or issued, hence, there is no need for submission of the proof of use at the moment of filing the application. In case priority is claimed at the moment of filing new application, then to such foreign registration can be granted priority right. There is a time by which use must begin and this period is five years as from the registration date.

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?

There are no provisions in the Trademark Law regulating use of words or symbols that indicate trademark use or registration. Therefore, it is permitted to use symbols such as ®, ™, etc, with the benefit being that such markings inform third parties that a trademark is registered.

Appealing a denied application

Is there an appeal process if the application is denied?

There is an appeal process before the IP office in case the application is denied. Usually, the local IP office provides a deadline of 60 days for the applicant to try to defend the denied application. At a later stage, if the first instance decision is not in favour of the applicant, it is possible to file a lawsuit before the Administrative Court within 20 days as from receipt of the first-instance 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?

Applications are published for opposition purposes. A third party may oppose an application prior to registration through the opposition proceedings. The basis for opposition is relative grounds for refusal. Also, there is a possibility to seek the cancellation of a trademark after the registration; however, cancellation action rests with the court proceedings. A cancellation action can be commenced because of absolute or relative grounds for refusal. The brand owner may oppose a bad-faith application for its mark in a jurisdiction in which they have no protection; however, in such cases, they have to prove bad faith on the part of the applicant, as well as the fact that their mark is recognisable among average consumers. Costs of the opposition proceedings and cancellation action depend from case to case. The administrative fee for filing the opposition claim is €150, while for a cancellation action the court official fee depends on the value of the case.

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?

Trademark registration lasts 10 years as from the application date, and can be renewed an innumerable number of times. It is not necessary to prove the use in order to renew trademark; however, in case the trademark is not in use after the expiration of the five-year grace period, the same can be challenged by some third interested party in opposition proceedings and court proceedings based on non-use. In case the use of such trademark is challenged, the trademark holder will have to prove the use of its trademark, if plans to maintain it are in force. Commonly submitted proofs of use are: invoices, customs declarations, documentation related to the turnover on the Montenegrin market, photos from the place of sale, leaflets, catalogues, brochures and other advertising material.

Surrender

What is the procedure for surrendering a trademark registration?

There is no specific procedure, it is on trademark owner to initiate such procedure, ie, to submit in writing the claim for renunciation. Upon receipt of the claim, the local IP office issues a decision and the trademark is cancelled from the register.

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 Uniform Domain Name Dispute Resolution Policy governs the protection of domain names. Disputes relating to ccTLD domain name .me are commenced before the WIPO, while online trademarks are protected through the cooperation of social media platforms, which use takedown systems, and through the available court proceedings for trademark infringement.

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 licence may be recorded against a mark in Montenegro. The Trademark Law and the Regulation on the Procedure of Granting, Changing, Renewing and Internationally Registering Trademarks govern the licensing of trademark rights. Licensing rights are protected through administrative proceedings. A licence must be recorded to have legal effect on third parties and must be published in the Intellectual Property Gazette. A licensing agreement should include:

  • details of the licensor and licensee;
  • the date of signing the agreement; and
  • a schedule of the trademarks covered by the agreement.
Assignment

What can be assigned?

It is for the assignor and assignee to arrange the assignment deed. There is no a legal provision that regulates assignment of goodwill. The subject of the assignment deed can be one trademark or list of trademarks or partial assignment (eg, assignment of trademark in only one class).

Assignment documentation

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

The following documents are required:

  • an assignment deed, signed by the assignor and by assignee, in original or a certified copy. The assignment deed only needs to be signed by both parties, there is no need for its legalisation and notarisation; and
  • powers of attorney in the name of assignor and assignee. Each power of attorney only needs to be signed by authorised person, there is no need for legalisation and notarisation.
Validity of assignment

Must the assignment be recorded for purposes of its validity?

In order to have an effect on third parties, the assignment deed has to be recorded, otherwise it will only have an effect between contractual parties.

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?

Security interest is recognised and must be recorded for purposes of its validity or enforceability. It suffices to submit the original document before the local office; there is no need for notarisation of the same.

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.

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.