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What is the primary legislation governing trademarks in your jurisdiction?
The Law on Trademarks (Official Gazette 104/2009 and 10/2013) governs trademarks in Serbia.
Which international trademark agreements has your jurisdiction signed?
Serbia has signed the following international agreements:
- the Nice Agreement on the International Classification of Goods and Services;
- the Vienna Agreement on the International Classification of the Figurative Elements of Marks;
- the Madrid Agreement on the International Registration of Trademarks;
- the Protocol Relating to the Madrid Agreement on the International Registration of Marks;
- the Nairobi Treaty on the Protection of the Olympic Symbol;
- the Trademark Law Treaty; and
- the Singapore Treaty on the Law of Trademarks.
Which government bodies regulate trademark law?
The Intellectual Property Office of the Republic of Serbia is the main body regulating trademark law. The relevant legislation is enacted through the National Assembly of Serbia.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Serbia is a first-to-file jurisdiction.
What legal protections are available to unregistered trademarks?
Unregistered trademarks enjoy protection under the Law on Unfair Competition, and also under the Trademark Law if they are well known in Serbia within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property.
How are rights in unregistered marks established?
The rights in an unregistered mark can be established either by the Intellectual Property Office (IPO) of the Republic of Serbia or a court holding that a trademark is a well-known mark in the course of cancellation proceedings, or by a court issuing such decision in an unfair competition suit.
Are any special rights and protections afforded to owners of well-known and famous marks?
The owners of well-known marks enjoy the same rights as owners of registered trademarks, provided that the mark’s well-known status is determined by the IPO or a court.
The owners of famous marks enjoy broader protection (ie, protection for goods and services not covered by the registration).
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademark registrations are not recognised in Serbia unless they are found to be well-known in Serbia.
What legal rights and protections are accorded to registered trademarks?
A trademark owner has the exclusive right to use a sign protected by a trademark for designating the goods or services to which the mark refers.
A trademark owner is entitled to prohibit other persons from illicitly using:
- a trademark identical to an earlier protected mark of the trademark owner for goods or services which are identical to the goods or services for which the trademark is registered; or
- a trademark identical to an earlier protected trademark of the trademark owner for similar goods or services, or a trademark which is similar to the trademark owner’s earlier protected trademark for identical or similar goods or services, if there is a likelihood of confusion among the relevant public due the identicalness or similarity, including the likelihood of association of that trademark with the trademark owner’s earlier protected trademark.
The trademark owner is also entitled to prohibit:
- affixing the protected trademark to the goods, packaging for goods or labelling (eg, labels, stickers and bottle stoppers);
- offering goods, their placement into circulation or storage for such purposes, or the supply of services under the protected trademark;
- the import or export of the goods under the protected trademark; and
- the use of the protected trademark in business documentation or advertisements.
The rights mentioned above are enjoyed by the applicant from the date of filing the application, as well by a trademark owner known in Serbia within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property.
Who may register trademarks?
Any natural or legal person may register a trademark.
What marks are registrable (including any non-traditional marks)?
Any sign capable of being represented graphically may be protected by a trademark provided that such signs are capable of distinguishing in the course of trade the goods or services of one natural or legal person from the goods or services of another natural or legal person.
A sign may comprise, among other things:
- combinations of colours;
- three-dimensional shapes;
- combinations of such signs; and
- graphically presentable musical notes.
Can a mark acquire distinctiveness through use?
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
A mark can be refused on both absolute and relative grounds. A mark cannot be registered if:
- it cannot constitute a trademark within the meaning of Article 4 of the Law on Trademarks;
- it is contrary to public policy or accepted principles of morality;
- it has a general appearance that does not enable goods or services to be distinguished in the course of trade;
- it consists exclusively of a shape which:
- results from the nature of the goods themselves;
- is necessary to obtain a technical result; or
- gives substantial value to the goods;
- it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time taken to produce the goods or render the service or other characteristics of the goods or services;
- it has become customary in the current language or in the good-faith and established practices of the trade;
- it is likely, due to its representation or content, to deceive the public as to, for example, the nature, quality or geographical origin of the goods or services;
- it contains official signs or hallmarks of quality control or warranty, or imitations thereof;
- it is identical to a protected trademark for identical goods or services;
- it is identical to an earlier protected trademark of another person for a similar type of goods or services, or similar to an earlier protected trademark of another person for an identical or similar type of goods or services, if such identicalness or similarity is likely to cause confusion to the relevant public, including the likelihood of association of the trademark with the earlier protected trademark;
- it is identical or similar to a sign of another person for identical or similar goods or services, which is well known in Serbia under Article 6bis of the Paris Convention for the Protection of Industrial Property;
- regardless of the goods or services concerned, it is a reproduction, imitation, translation or transliteration of a registered trademark of another person, or the essential segment thereof, which is known to those participating in commerce as a famous trademark used by other parties to mark their goods or services if the use of the trademark would result in an unfair benefit from the reputation acquired by the famous trademark or harm to its distinctive character or reputation;
- by its appearance or content, it infringes copyright or industrial property rights;
- it comprises a state or another public coat of arms, flag or other emblem, name or abbreviation of the name of a country or of an international organisation, or imitations thereof unless the competent authority of the country or organisation concerned has given its authorisation for such use; or
- it represents or imitates a national or religious symbol.
A sign referred to in Articles 4(1)(3), (5) and (6) of the Law on Trademarks may be protected as a trademark if the applicant proves that the serious use of such sign has rendered the sign capable of being distinguished in the trade in goods or services concerned.
Are collective and certification marks registrable? If so, under what conditions?
Yes. The conditions are the same as for individual trademarks; however, an application for registration of a collective trademark must be accompanied by a general act on collective trademarks, whereas an application for the registration of a warranty trademark must be accompanied by a general act on warranty trademarks.
A general act on collective trademarks must contain:
- the particulars of the applicant or its representative;
- provisions relating to the appearance of the trademark and the goods or services to which it relates;
- provisions identifying the holders of the right to use the collective trademark and setting out the conditions for such use; and
- provisions on the rights and obligations of users of the collective trademark in the event of infringement of the trademark and the provisions setting out measures and consequences in case of violation of the general act.
The general act on warranty trademarks must contain, in addition to the provisions mentioned above:
- provisions on common characteristics of goods or services guaranteed by the warranty trademark; and
- provisions on the supervision of use of the warranty trademark by its holder.
Filing and registration
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, agents are required to submit power of attorney on behalf of the owner, but it should only be signed.
What information and documentation must be submitted in a trademark registration application?
The essential elements of the application are:
- the request for registration;
- the sign for which protection is requested; and
- the list of goods or services to which the sign relates.
An application may contain a request for registration of a single trademark relating to one or more types of goods or service.
The request for registration must include:
- the particulars of the applicant;
- a statement to the effect that the trademark is an individual trademark, collective trademark or warranty trademark;
- a representation of the sign;
- an indication of the class or classes under which the goods or services are classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
- the signature and stamp of the applicant.
If the sign includes a figurative element, the depiction of this element must be clearly made on good-quality paper and must be suitable for reproduction.
This is regulated by the Regulation on the Content of the Registers of Trademark Applications and Registered Trademarks (Official Gazette 43/2010 ).
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
The administrative fee for an application for a word mark in up to three classes is €140, with an additional fee of €27 for each additional class or figurative mark application.
How are priority rights claimed?
Union priority right
Any legal or natural person which has filed a trademark application in a member state of the Paris Union or the World Trade Organisation has a right of priority in Serbia as of the filing date of the original application, provided that an application for the same trademark is filed in Serbia within six months of the effective date of the first application. The Serbian application must include the filing date of the original application, the application number and the country where it was filed.
The competent authority will issue a priority certificate on the request of the domestic or foreign natural or legal person which filed the trademark application. The request for a priority certificate must include:
- data about the applicant;
- a representation of the sign;
- a list of the goods or services; and
- proof of payment of the fee for the certificate.
Exhibition priority right
An applicant which, within three months before filing an application, has used a sign to mark a product or service in an exhibition or international fair in Serbia or in another member state of the Paris Union or the World Trade Organisation may request in the application to be granted a priority right from the date of first use of such sign.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Yes. The procedure consists of searching the official database of the Intellectual Property Office (IPO) of the Republic of Serbia for a word mark (no official fee) or filing a request with the IPO for a trademark search for a device mark (official fee of €25). The IPO provides the search results within seven to 10 days and the search opinion is based on the results provided.
What factors does the authority consider in its examination of the application?
It considers the formal requirements as well as absolute and relative grounds for refusal.
Does the authority check for relative grounds for refusal (eg, through searches)?
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Yes, the applicant can take measures to rectify the application. Namely, if the IPO finds that the application should be refused on the basis of relative or absolute grounds, it will inform the applicant in writing of the grounds of refusal and ask for comments.
Can rejected applications be appealed? If so, what procedures apply?
Yes – an appeal can be filed with the Administrative Commission of the Government of the Republic of Serbia, which acts as a second-instance authority. The applicant should submit all arguments on which the appeal is based, and the decision will be issued in nine to 12 months.
When does a trademark registration formally come into effect?
The right to a trademark is acquired by entry into the Register of Trademarks and is effective as of the filing date of the application.
What is the term of protection and how can a registration be renewed?
The duration of a trademark is 10 years from the date of filing the application, and its validity may be renewed for an indefinite number of times on the filing of a request and payment of the prescribed fee.
What registration fees apply?
The official fee for registration of a word trademark in up to three classes is €287. Each additional class costs another €37, and the same fee applies to registration of a figurative trademark.
What is the usual timeframe from filing to registration?
Nine to 12 months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
No – there is no opposition system in Serbia. Third parties may file an observation claim bringing their prior trademark to the examiner’s attention; however, they do not become a party in a proceeding.
What is the usual timeframe for opposition proceedings?
Are opposition decisions subject to appeal? If so, what procedures apply?
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Yes – at the request of an interested party the competent authority may issue a decision on revocation of a trademark if the trademark owner or its authorised person fail to seriously use the trademark on the domestic market for goods or services for an uninterrupted period of five years from the date on which the trademark was entered into the Trademark Register or from the day of its last use. During the proceedings for termination of a trademark due to non-use, the trademark owner or its authorised person must prove that the trademark has been used. The procedure is held before the Intellectual Property Office of the Republic of Serbia and a decision is usually issued within 12 months. This decision can be appealed.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
The competent authority may, at the request of an interested party, issue a decision on revocation of a trademark in the following cases:
- If the sign protected by a trademark, due to actions or omissions by the trademark owner or its successor in rights, has become a generic term for the goods or services for which it was registered;
- If the sign protected by a trademark, due to the manner of use by the owner or its successor in rights, has become capable of causing confusion in commerce about the geographical origin, type, quality or other characteristics of the goods or services; and
- If the sign protected by a trademark has become contrary to public policy or accepted principles of morality.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any interested party may file such a request in writing. The procedure for revocation of a trademark will be initiated on this basis.
What are the evidentiary and procedural requirements for revocation proceedings?
The procedure for revocation of a trademark for reasons specified in Articles 64 and 66 of the Law on Trademarks will be initiated on the basis of a written request. The request under Article 64(1) must include:
- data about the applicant;
- data about the owner of the trademark to be revoked;
- the registration number of the trademark to be revoked;
- the reason for requesting revocation; and
- a statement as to whether revocation of the trademark as a whole is sought or only revocation in respect of certain goods or services.
The competent authority must submit a request to the trademark owner inviting it to submit a reply within 30 days of receipt.
After completion of the relevant procedure, the competent authority will render a decision to revoke the trademark as a whole or only in respect of certain of the goods or services, or to reject the request.
What is the appeal procedure for cancellations or revocations?
The decision can be appealed before the Administrative Commission of Government of Republic of Serbia. The second-instance decision is usually passed within one year.
What is the procedure for surrendering a trademark registration?
Trademark rights can be terminated before the expiry of the 10-year validity period if the trademark owner surrenders its right. The rights will expire on the day after the owner submits the declaration of surrender to the IPO.
Which courts are empowered to hear trademark disputes?
Both general and commercial courts.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Civil, criminal and administrative actions are available in cases of trademark infringement.
Administrative actions can be brought against final decisions passed in administrative proceedings. These are heard by an administrative court and the process usually takes one to two years. An administrative action can be also filed where the administrative body failed to respond to a party’s request.
The Law on Trademarks also provides for civil protection against infringement. The civil court proceedings usually involve several procedural steps, including the plaintiff submitting a suit, the defendant filing a written response to it, a preliminary oral hearing and two or more further oral hearings.
While the Law on Trademarks does not deal with criminal liability in cases of infringement, the Criminal Code of the Republic of Serbia prescribes criminal acts regarding the misuse of trademarks. In such case, an action is brought before the general courts hearing regular criminal court proceedings.
Who can file a trademark infringement action?
An infringement action may be filed by a trademark owner, an applicant, the holder of a licence, a user of the collective trademark or with the consent of the collective trademark owner and a user of the warranty trademark or with the consent of the warranty trademark owner.
The holder of a licence can file an infringement action for the infringement of its rights if this is not prescribed by the licence contract.
What is the statute of limitations for filing infringement actions?
An infringement action may be filed within three years of the plaintiff becoming aware of the infringement and the infringer, but no later than five years from the first infringement.
What is the usual timeframe for infringement actions?
One to three years.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
If a party alleges that its rights have been infringed or are about to be infringed, the court may order provisional measures for:
- the seizure or removal from circulation of infringing products;
- the seizure of the equipment for production of the products; or
- an injunction prohibiting the continuation of activities which could result in an infringement.
Where there is a risk of irreparable harm to the rights holder, the court may order provisional measures without hearing the defendant.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
In the event of the infringement of rights, an action may be filed and the plaintiff may request:
- a determination of infringement;
- termination of the infringement;
- confiscation, exclusion from the channels of commerce, destruction or alteration of the infringing objects without compensation;
- confiscation, exclusion from the channels of commerce, destruction or alteration of the tools and equipment used to manufacture the infringing objects without compensation if necessary for the protection of rights;
- reimbursement of any 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
- the supply of information about third parties participating in the infringement of rights.
Any infringer is liable for damages in accordance with the general rules of compensation for damages.
If the infringement was committed intentionally or by gross negligence, instead of compensation the plaintiff may claim up to triple the licence remuneration it would usually receive for use of the trademark.
What customs enforcement measures are available to halt the import or export of infringing goods?
Customs can act ex officio or based on a valid customs watch.
In case of an ex officio action, Customs will temporarily seize the goods and notify the trademark owner of:
- the seizure;
- the suspicion that its rights may have been infringed; and
- the possibility of filing an application for a customs watch within four working days of notifying the rights holder.
If the rights holder files an application for customs watch, the goods will remain detained by Customs until a decision on the application for the customs watch is issued. If the customs watch is granted, the goods will be detained for another 10 working days and the procedure is then the same as where the customs watch was previously established.
If the customs watch is already in place, Customs will notify the rights holder of the seized goods and request confirmation of the suspicion that the goods infringe trademark rights. Once this has been confirmed, Customs will ask the importer to declare whether the goods are counterfeit within 10 working days. If the importer agrees that the goods are counterfeit or fails to respond within the deadline, the goods can be seized by Customs and destroyed at the request and expense of the rights holder. If the importer declares that the goods are not counterfeit, Customs will notify the rights holder of this declaration. The rights holder then has 10 working days to bring an action for the infringement of its rights and to inform Customs of the action (this deadline can be extended for another 10 working days on request by the rights holder).
What defences are available to infringers?
In infringement proceedings an alleged infringer can claim the following defences:
- that it is using its own trade name, acquired in good faith before the priority date of the plaintiff’s trademark;
- the exhaustion of the plaintiff’s trademark rights;
- the use of, in accordance with good business practices, 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; and
- a sign 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;
- that it is using its own registered mark;
- that there has been continued or prior use of the mark in good faith and without objection from the rights holder (ie, that the statute of limitations has expired);
- that the marks are dissimilar and there is no likelihood of confusion; and
- that the goods or services in relation to which it is using the mark are dissimilar to those covered by the plaintiff’s trademark, unless the plaintiff’s trademark is well known.
What is the appeal procedure for infringement decisions?
The first-instance decision can be appealed before the second-instance courts, which usually pass a decision within nine to 12 months.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
A trademark or rights arising from the trademark application may be assigned to another party in respect of some or all of the goods or services for which it is registered or applied.
The assignment of a trademark or rights arising from the application may be the consequence of an assignment agreement, a change of status of the trademark owner or the applicant, or a court or administrative decision.
The assignment of rights will be recorded in the appropriate register of the competent authority on the request of the trademark owner or applicant or assignee.
The registration of the assignment in the appropriate register of the competent authority has legal effect in relation to third parties.
Therefore, an assignment must be recorded in order to have legal effect on third parties.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
A trademark owner or applicant may, on the basis of a licence agreement, grant a licence for the right to use the trademark or for the rights arising from the application in respect of all or some of the goods or services.
The registration of the licence agreement in the appropriate register of the competent authority has effect in relation to third parties.
The registration of the licence agreement, under Paragraph 1 of this article, in the appropriate register of the competent authority is subject to a special decision.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
A licence agreement must be made in writing and contain:
- the date of the signing, and the name and surname or company title of the signing party;
- the domicile, residence or business seat of the contractual parties;
- the trademark registration number or the number of the trademark application;
- the term of validity of the licence; and
- the scope of the licence.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A trademark or the rights granted by a trademark application may be the subject of a pledge on the basis of a pledge agreement, court decision or a decision by the competent administrative body in respect of some or all of the goods or services.
The pledge agreement must be drawn up in writing and contain:
- the date of the signing, and the name and surname or company title of the signing party;
- the domicile, residence or business seat of the contractual parties as well as the pledgee, if it is not the same party;
- the trademark registration number or the number of the trademark application; and
- information about the claim secured by the right of pledge.
The pledge must be recorded in the appropriate register of the competent authority on the request of the trademark owner or applicant or the pledger.
The registration of the pledge in the appropriate register of the competent authority is subject to a special decision.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
The use of trademarks online and as domain names can be protected through court actions or special arbitration proceeding held before the Registrar of National Internet Domain Names.