Registration and useOwnership 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:
- 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.
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.
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.