Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation is the Law on Industrial Property.

International law

Which international trademark agreements has your jurisdiction signed?

Macedonia is a signatory of:

  • the Madrid Agreement and Protocol;
  • the Singapore Treaty on the Law of Trademark;
  • the Paris Convention for the Protection of Industrial Property;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification);
  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (Vienna Classification); and
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Regulators

Which government bodies regulate trademark law?

The Industrial Property Office, Customs and the State Market Inspectorate.

Registration and use

Ownership 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.
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?

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 a figurative markType of search
  • search for an identical trademark: €12; and
  • search for a similar trademark: €15.
Search for a combined mark (word and figurative)Type of search
  • 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.

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 agreement can be recorded in the Industrial Property Office registry. The applicant has to file:

  • a warrant;
  • a power of attorney;
  • the licence agreement - in original or notarised and translated into Macedonian; and
  • proof of fees paid.

Regarding the benefits, the Macedonian Law on Intellectual Property provides that:

  • if a licence, pledge or any other right of a third rights owner has been entered into the trademark register, the trademark owner cannot renounce their rights without written consent from the rights owner who is signatory of the licence, pledge or other right;
  • if the trademark owner fails to pay the fee within the prescribed time limit and the licence, pledge or any other right of a third rights owner has been entered into the trademark register, the Industrial Property Office shall notify that rights owner that the fee has not been paid, and that in order to keep their right they shall have to pay the fee within six months from the date of notification;
  • in case of a dispute regarding transfer of the registered rights to a third party, if that is necessary for provision of those rights, the court may decide that the trademark right should be transferred to the rights owner or holder of a licence, pledge or other right until the fulfilment of the obligations; and
  • a licence agreement not registered in the appropriate Industrial Property Office register shall not provide effect against third parties (ie, if the agreement is not recorded, it will take effect inter partes, and after the recordal it will take effect erga omnes).

According to Macedonian jurisdiction, important elements of the contract are (only) the object and price of the contract. The Industrial Property Office examines not only the content of the contract but its form. А shortened form of contract is sufficient for the need of proceedings before the Industrial Property Office.

Assignment

What can be assigned?

The industrial property right applicant and the holder of the right, by agreement in its entirety or partly, may assign their right under the stipulations provided in the National Law on Industrial Property.

Assignment documentation

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

Assignment requires the following documentation:

  • a warrant;
  • power of attorney;
  • the assignment agreement - in original or notarised and translated into Macedonia; and
  • proof of fees paid.

An agreement for the assignment of trademark rights must be in writing and signed by the contracting parties. The signatures must be certified by a notary.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

An assignment agreement will be registered in the relevant register of the Industrial Property Office upon request of one of the contracting parties.

An agreement on transfer of a right that is not entered in the respective register of the office has no legal effect towards third 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?

For the purpose of validity and enforceability of the security interest, it must be registered in front of the pledge registry. There is no imperative rule to register the pledge before the Industrial Property Office, but the registration may be beneficial to the parties, especially the pledgor and the creditor.

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?

Except for the administrative procedure in front of the Industrial Property Office and the administrative court as a second instance, the rights holder can file a lawsuit in front of the primary court (there are not specialised courts), a warrant for actions in front of the Market Inspectorate, and in front of the Coordinative Commission, which is part of the Industrial Property Office. Note that according to practice, the latter two institutions do not make a significant contribution in the fight against the infringement of intellectual property rights.

Article 285 of the Criminal Code provides that a felony is: 'the offence of infringement of industrial property rights and unauthorised use of a someone else’s company against a person who contravenes an industrial property law with the intent to deceive buyers or service users of infringing another's trademark'. However, it must be borne in mind that the prosecution is inconsistently applying or enforcing this legal norm.

Procedural format and timing

What is the format of the infringement proceeding?

Discovery, live testimony and experts are available.

In case of infringement, a state authority and the court are competent.

Depending on which institution is proceeding, the procedures may be different, but in general both procedures require:

  • filing a warrant (lawsuit);
  • submitting and exhibiting evidences;
  • carrying out an examination; and
  • issuing a decision.

There are no hearings in front of the administrative bodies.

Usually, the administrative procedure may last:

  • two to five years in first instance;
  • one to one-and-a-half years in second instance; and
  • one to one-and-a-half years in third instance.

The court procedure may last:

  • one to one-and-a-half years in first instance;
  • three months to one-and-a-half years in second instance; and
  • eight months to one-and-a-half years in third instance.

Criminal prosecution of IP infringers is provided, but in practice it is rarely used.

Burden of proof

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

The burden of proof falls on to the party that initiates the procedure regarding the existence of infringement.

In the case of a claim for revocation of a trademark for non-use, the burden of proof shall be borne by the rights holder.

Standing

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

Only the rights holder. The licence holder or other authorised person, can file remedies only if there is such provision in the agreement or the authorisation.

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?

  • customs measures are the available measures for intellectual property rights' enforcement. To use this measure, the following requirements need customs office approval:
    • an existence of a protected right with effect in Macedonia (ie, registration of the industrial property right in Macedonia); or
    • a submitted request for customs protection, with it requiring approval by the customs office; and
  • charges of infringement or dilution of intellectual property rights outside Macedonia are not relevant.
Discovery

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

Proof of evidence provided outside the country is allowed. Namely, the parties are obliged to present the facts and circumstances on which they base their claims, as well as to propose evidence that establishes those facts. However, it should be borne in mind that the court is empowered to determine on its own what evidence is relevant to the proceedings, which evidence to be examined or not.

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?

A lawsuit with (or without) a warrant for a preliminary injunction for infringement of the rights regulated by the Law of Industrial Property may be filed within a period of three years as of the day the defendant has become aware of the infringement and of the offender, but not later than five years as of the day of the committed infringement.

Limitation period

What is the limitation period for filing an infringement action?

A lawsuit for a rights infringement (with or without preliminary injunction) regulated by the Law of Industrial Property may be filed within a period of three years as of the day the defendant has become aware of the infringement and of the offender, but not later than five years as of the day of the committed infringement.

Litigation costs

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

Litigation costs are as follows:

  • costs in the first instance: €1,500 to €5,000; and
  • costs in all three instances: up to €10,000.

The losing party is obliged to settle the costs of the opposition side. In practice, there are difficulties in collecting the awarded costs.

Appeals

What avenues of appeal are available?

Industrial Property Office decisions are final; however, a lawsuit can be filed against them in front of the Administrative Court. Appeals against Administrative Court decisions can be filed in front of the Higher Administrative Court. Appeals against a first instance verdict can be filed in front of a secondary court. Revisions against a secondary court’s verdict can be filed in front of the Supreme Court.

Defences

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

Defences such as negotiations, mediation, appeals and remedies during the proceeding (ie, providing evidence in favour for the acquired industrial property or priority right) are available; that is, administrative and litigation.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Obligations' enforcement in Macedonia is carried out through authorised enforcement agents acting as executors; however, such procedures incur high and unpredictable and are generally inefficient.

If the first action of an executor is unsuccessful, the executors will take another action at the expense of the creditor.

Forced settlement of monetary claims or foreclosures are only effective if the debtor owns property.

Forced execution of orders to do or to restrain from doing, in practice, can be considered as non-executable.

Criminal prosecution against such debtors does not exist.

ADR

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

Mediation and arbitrage do exist, but generally in theory only; in practice, they are rarely used.

The benefits are short; fast procedures lower costs and are obligatory in character, however, it seems that such methods are not trusted enough, especially since they are obligatory in character and there is no second instance against such decisions.

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?

Macedonian jurisdiction lacks sufficient experience with the judicial protection of intellectual property rights, which has led to judges and other legal professionals lacking the required competence in this field of law, leading to its inconsistent application such as when applying legal rules in individual cases.