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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; and
  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.

Regulators

Which government bodies regulate trademark law?

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

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Ownership is determined on a first-to-file basis.

Unregistered trademarks

What legal protections are available to unregistered trademarks?

Unregistered trademarks enjoy protection under unfair competition law, as well as under trademark law if they are well known in Macedonia 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 Industrial Property Office deciding that a trademark is well known mark in the course of an opposition or cancellation procedure, or by a court of law.

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 their well-known status is determined by the Industrial Property Office or a court. In fact, owners of famous marks enjoy broader protection than registered owners as protection extends to goods and services not covered by their registration in another jurisdiction.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign trademark registrations are not recognised in Macedonia, except where their well-known status in Macedonia is recognised (as described above).

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

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;
  • to submit the documentation and data of the person violating the right; and
  • to seek civil punishment.

Who may register trademarks?

Any natural or legal person.

What marks are registrable (including any non-traditional marks)?

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.

Can a mark acquire distinctiveness through use?

Yes.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

The registration of a trademark can be refused on both absolute and relative grounds.

Absolute grounds for refusal: A trademark shall not protect a sign:

  • the publication or use of which is contrary to the public order or morality;
  • that cannot be represented graphically;
  • that is not distinctive or capable of distinguishing  goods or services in trade;
  • that indicates exclusively the kind of goods or services, their purpose, time or manner of production, geographical origin, quality, price, quantity or weight;
  • that has become usual in the everyday speech or in the established trade practice for marking certain types of goods;
  • the appearance of which may create confusion in trade and mislead the average consumer, particularly as to the geographical origin, type, quality or other properties of the goods or services;
  • that contains or consists of a geographic sign which serves to signify wines or other strong alcoholic drinks, if the reported sign refers to wines or alcoholic drinks that are not from that geographical area;
  • that contains a seal or stamp, official signs or hallmarks for control and guarantee of quality and imitations thereof;
  • that contains a national coat of arms, or other public coat of arms, flag or emblem, name or abbreviated name of a country or an international organisation, as well as imitations thereof, according to Article 6ter of the Paris Convention, except with authorisation from the competent authority of the country or organisation in question;
  • that contains the name or abbreviation of that name, the coat of arms, flag, emblem or other  official symbol of the Republic of Macedonia, as well as their imitations, except with authorisation from a competent state administrative body;
  • that contains or imitates a figure or name of a historical or dead eminent person from the Republic of Macedonia, except with authorisation from a competent state administrative body;
  • that contains or imitates the name, shape or other recognisable part of protected cultural inheritance of the Republic of Macedonia, except with authorisation from a competent state administrative body; and
  • that contains religious symbols or imitations thereof.

Relative grounds for refusal: A trademark may not protect a sign:

  • that is identical to an earlier trademark filed or registered by another rights holder designating identical goods or services;
  • that is identical or similar to an earlier trademark filed or registered by another rights holder designating the same or similar goods or services which would create confusion for the average consumer, including the possibility of association with the earlier filed or registered trademark;
  • that is identical or similar to an earlier registered trademark to other party, for goods ,i.e. services which are neither identical, nor similar to the goods, i.e. services the sign has been reported for, if the earlier registered  trademark has reputation in the Republic of Macedonia and if the use of this sign, without justified reason, would represent an unfair competition or would do harm to the distinctive character or the reputation of the trademark”.
  • that is identical or similar to a trademark the validity of which has expired and if the rights holder failed to file a request for renewal and pay the prescribed fees in the prescribed time limit, when a trademark application was filed within nine months of the expiry date of the trademark validity, unless the application is filed by the owner of the earlier mark or its successor in title.

Are collective and certification marks registrable? If so, under what conditions?

They are registrable. Collective marks protect signs intended for collective designation of the goods or services put on the market by an association of legal and natural rights owners. The applicant for a collective mark may be a domestic association of legal and individual rights owners. Under the terms of the Law of Industrial Property and in accordance with international conventions signed by Macedonia, the applicant may also be a foreign legal rights owner. The application for a collective mark shall be accompanied by a general act or contract for the collective mark. On request of the applicant or the owner of a collective mark, the Industrial Property Office shall record into the register any change or amendment to the agreement regulating the use of a collective mark. The rights arising from a collective mark shall not be transferable and cannot be licensed.

Certification marks protects signs that are used by several companies under supervision of the certification mark owner; the marks protect the quality, origin, way of production and other joint characteristics of goods or services of those companies. The application for a certification mark shall be accompanied by rules for use of it, including provisions on the quality and other characteristics of the goods or services, the control measures that will be used by the applicant of the certification mark and the sanctions that it will be applying. The certification rights owner may not use that mark for marking products and services that it puts on the market.

Filing and registration

Filing procedure

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. There is no need for notarisation or legalisation.

What information and documentation must be submitted in a trademark registration application?

The trademark application must include:

  • a request for recognition of the trademark right;
  • information concerning the applicant;
  • a description/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.

What rules govern the representation of the mark in the application?

 The representation of the mark is governed by the Rulebook of Trademarks and the Law on Industrial Property.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

 Formally, yes; however, it is inapplicable in practice as the relevant software has not yet been installed.

What are the application fees?

The official fee for filing a trademark application is €10, for up to three classes, and €0.80 for each subsequent class of products and services

Priority

How are priority rights claimed?

The applicant shall acquire priority right as from the date of filing of the application over any applicant filing a later trademark application for an identical or similar sign and identical or similar goods or services.

Union priority right: Any legal entity or individual rights owner that had duly filed an application in any of the state member of the Paris Union or World Trade Organisation (WTO) shall be granted priority right in Macedonia from the date of filing of the first application if that is claimed within six months of the filing date of the first application. The applicant that intends to use the priority right must:

  • give all information regarding the first application (state, date and number of application) in the application filed in Macedonia; and
  • within 90 days of the date of filing the application, submit a copy of the first application certified by the competent authority of the state member of the Paris Union or WTO with which the first application was filed, as well as a translation of the first application in the Macedonian language.

Exhibition priority right: A rights owner that exhibited goods or services marked by a specific sign at an officially recognised international exhibition or fair in Macedonia or in any member state of the Paris Union or the WTO may request, when filing an application, that the date of exhibition of the goods or rendering of the services be accorded as the priority date, as long as the trademark application is filed within three months of the date of the closing of the exhibition or fair. The application shall be accompanied by a certificate issued by a competent authority of the state member of the Paris Union or WTO proving that the exhibition or fair was recognised within the meaning of the Convention for International Exhibitions and indicate the type of exhibition or fair, its place, its opening and closing dates and the first day of exhibiting the goods or rendering the services specified in the application.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

Trademark searches are available before filing on the official site of the Industrial Property Office for the Nice Classification only, and not for the Vienna Classification. A trademark search also can be required before filing an application with the Industrial Property Office.

 Below is an overview of official search fees in databases for a sign in one to three classes:

Search for a word mark

Type of search

Fee

Search for identical trademark

9 €

Search for similar trademark

12 €

 

Search for a figurative mark

Type of search

Fee

Search for identical trademark

12 €

Search for similar trademark

15 €

 

Search for a combined mark (word and figurative)

Type of search

Fee

Search for identical trademark

15 €

Search for similar trademark

19 €

 

For all listed items, the search fee increases by €3 per additional class after the third class.

Examination

What factors does the authority consider in its examination of the application?

If the application contains the mandatory information, the Industrial Property Office will notify the applicant of the date of filing and the application is entered in the register of trademark applications. An application will be published in the office’s Official Gazette 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; and
  • a power of attorney if the application is filed through an agent; and
  • the appropriate fees are paid.

Does the authority check for relative grounds for refusal (eg, through searches)?

No, the Industrial Property Office does not check relative grounds for refusal, only absolute ones.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

If the application fails to provide all the information required by law and the office raises objections on that basis, the office will inform the applicant of the application’s shortcomings and invite it to correct the identified defects within 30 days. If the applicant corrects the deficiencies by the deadline, the office will determine the date of submission of the application as the date of the correction submission.

Can rejected applications be appealed? If so, what procedures apply?

 Where an applicant fails to submit corrections to its application within 30 days of receipt of the invitation to do so, the application will be considered withdrawn and a decision will be made for rejecting the application. The applicant may initiate an administrative dispute against that decision.

Registration

When does a trademark registration formally come into effect?

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.

What is the term of protection and how can a registration be renewed?

A trademark is valid for 10 years from the date of filing the application. The validity of the trademark can be extended an unlimited number of times for a period of 10 years if the holder, during the last year of validity or at the latest nine months after the expiration of the validity, files an application for renewal and pays the appropriate fees and costs. The new period of protection begins the day after the last day of the previous 10-year protection period. When the request for the extension of the validity of the trademark covers only part of the goods or services for which the trademark was registered, the validity of the trademark is extended for those goods or services only.

What registration fees apply?

 The fees for registration of a trademark are €67 plus €6 of publication fee.

What is the usual timeframe from filing to registration?

The usual timeframe from filing to registration is eight to 24 months.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

 The applicant of an earlier-filed application, registration and/or owner of an earlier acquired IP right can oppose a published application on the basis of these earlier rights.

Any legal entity or individual may send to the Industrial Property Office a written request setting out the absolute grounds for refusal that it considers make the mark unregistrable. In other word, while a third party cannot formally oppose an application, it can point out in writing the deficiencies of the application regarding absolute grounds for refusal.

What is the usual timeframe for opposition proceedings?

This depends on many factors, but opposition proceedings typically last at least four years.

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes, opposition decisions are subject to appeal. Either party shall have the right to initiate an administrative dispute against the decisions of the Industrial Property Office before the Administrative Court. The lawsuit shall be filed within 30 days from the day the complaining party has received the (opposition) decision from the office.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

Yes, the mark can be cancelled for non-use. This kind of cancellation can occur if the rights holder, without any justified reasons, fails to use the trademark in the course of trade for a continuous period of over five years from the date when the trademark has been entered in the register of trademarks.

In a procedure for non-use, the rights holder must prove that it uses the trademark.

The Industrial Property Office will reject an application for cancellation for non-use if use of the trademark has resumed after five years of non-use but before the application for cancellation was filed, unless the use resumed three months or less before the application for cancellation and only after the rights holder had been informed of the intention to file a cancellation action for non-use.

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

A trademark registration can be revoked if the Industrial Property Office determined that the conditions envisaged by the rules regulating the absolute or relative grounds for refusal were not met.

Who may file a request for revocation and what is the statute of limitations for filing a request?

Any interested party can request a revocation. An ‘interested party’ here is the applicant or holder of an earlier right, whether it be a legal or natural person. The Industrial Property Office can also initiate this procedure ex officio.

What are the evidentiary and procedural requirements for revocation proceedings?

A trademark may be revoked at any point during the 10-year protection period either ex officio or following a request by a party concerned, as defined above.

A request for revocation will, however, be rejected if the interested party had been aware of the use of the earlier mark for at least five years preceding the request for revocation.

A request for revocation must be submitted in writing to the Industrial Property Office. The office must inform the trademark holder of the request for revocation within 15 days of receipt of the request and invite it to respond within 60 days of the date of receiving the notice of the request for revocation.

Appeal

What is the appeal procedure for cancellations or revocations?

An unsatisfied party in a cancellation or revocation procedure may initiate a court procedure against the office’s decision before the Administrative Court.

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 to the trademark.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Trademark infringement disputes are conducted in front of the Primary Court. Trademark disputes against the decisions of the Industrial Property Office are conducted before the Administrative Court.

Actions

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.

An administrative action can be brought:

  • against a final decision in administrative proceedings, for which the Administrative Court is competent; and
  • where the Industrial Property Office has failed to reply to a request and thus failed to issue the relevant decision. 

The Law on Industrial Property also provides for civil protection against infringement. Civil court proceedings normally consist of several procedural steps, including the plaintiff’s submitting a lawsuit, the defendant filing a written response to it, a preliminary oral hearing and two or more further oral hearings.

While the Law on Industrial Property does not speak of criminal liability for trademark infringement, the criminal codes of the Republic of Macedonia provide that the misuse of trademarks is a criminal act. An action can be brought before the general courts handling regular criminal court proceedings.

Who can file a trademark infringement action?

 The following parties can file a trademark infringement action:

  • the applicant for the trademark at issue;
  • the holder of the trademark registration;
  • the exclusive licensee; and
  • the authorised user of a collective or certification trademark.

What is the statute of limitations for filing infringement actions?

A trademark infringement lawsuit may be filed within three years of the day the plaintiff has become aware of the infringement and of the offender, but no later than five years from the day of the infringement occurring.

What is the usual timeframe for infringement actions?

The usual timeframe is between two and three years.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

A court may order:

  • a provisional measure for the seizure or removal from circulation of infringing products and of the equipment used for the production of those products; and/or
  • an injunction prohibiting the continuation of activities that could result in an infringement.

To obtain a provisional measure and/or an injunction order, the plaintiff must file an application requesting such measure and prove that its rights have been infringed or are about to be infringed.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The plaintiff may request that the court:

  • make a determination of infringement;
  • order the termination of the infringement;
  • order the confiscation, exclusion from the channels of commerce, destruction or alteration of the infringing objects without any compensation;
  • order the confiscation, exclusion from the channels of commerce, destruction or alteration of the tools and equipment used to manufacture the infringing objects, without any compensation;
  • order the defendant to pay damages caused by the infringement and justifiable legal costs and expenses;
  • publish the decision at the expense of the defendant; and
  • order the defendant to provide information about third parties participating in the infringement.

Any infringer shall be liable for damages in accordance with the general rules of compensation for damages.

If the infringement was committed intentionally or by gross negligence, the plaintiff may, instead of compensation, claim up to triple the amount of the licence remuneration that it would usually receive for the use of the trademark.

Punitive damages are permitted. The Law on Industrial Property provides that the owner of a trademark that has been infringed may ask for payment of the regular compensation increased by 200%, irrespective of whether the loss caused by the infringement amounts to the same amount.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Customs can act ex officio or based on valid custom watches.

In case of an ex officio action, Customs will temporarily impound the goods and notify the trademark owner about the goods impounded, the suspicion that its rights are infringed, and the possibility of filing a customs watch within five working days of the date of impounding. If the mark owner files an application for customs watch, the goods remain detained by Customs until a decision is issued upon the application for the customs watch. If the customs watch is granted, the goods will be detained for another 10 working days and the procedure thereon is the same as if the customs watch had been granted prior to the impoundment.

If the customs watch was in place at the time of the impoundment, Customs will notify the representative of the trademark owner of the seized goods and request confirmation of the suspicion that the goods are infringing trademark rights. Once this is confirmed, Customs will request that the importer declare whether the goods are counterfeit or not, within 10 working days. If the importer agrees that the goods are counterfeit or if it fails to respond within the prescribed deadline, the goods can be seized by Customs and destroyed at the request of the rights holder, and at its expense. When the importer declares that the goods are not counterfeit, Customs will notify the trademark owner of this declaration. The trademark owner then has 10 working days (extendable by another 10 working days at a reasoned request) to bring an action for infringement and to inform Customs of this action.

Defence

What defences are available to infringers?

Alleged infringers can defend themselves in infringement proceedings claiming that:

  • they are using their own trade name, acquired conscientiously before the priority date of the plaintiff’s trademark;
  • the plaintiff’s trademark rights are exhausted;
  • they are using, in accordance with good business practices, in the course of trade:
    • their 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 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;
  • they are using their own registered mark;
  • there has been continued use or prior use of the mark in good faith and without opposition from the title holder – that is, the statute of limitations has expired;
  • the marks are dissimilar and there is no likelihood of confusion; or
  • the goods/services in relation to which they are using the mark are dissimilar to those covered by the plaintiff’s trademark, unless the plaintiff’s trademark is well known.

Appeal

What is the appeal procedure for infringement decisions?

Either party may lodge an appeal against the first-instance decision of a civil or criminal court before the Appellate Court.

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

The assignment of trademark rights is governed by the Law on Industrial Property and the Law on Obligations.

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.

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.

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

Trademark licensing is governed by the Law on Industrial Property and the Law on Obligations. A licence agreement that is not entered in the relevant register of the Industrial Property Office cannot be enforced against third parties.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Licensing agreements typically include provisions relating to the subject matter, the licence fee and the territory for which the licence is valid.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

A security interest can be registered over a trademark. The Law on Contractual Pledge, the Property Law, the Law on Obligations and the Law on Industrial Property all apply. A trademark registration and/or the right deriving from an application may be the subject of a pledge, on the basis of a pledge agreement, a court decision or a decision by the competent administrative body, in respect of some or all of the goods or services.

The pledge agreement shall be drawn up in writing and contain the date of signing, the name and surname or company title, domicile or residence, and/or the seat of the contractual parties, as well as the pledgee, if it is not the same person, the trademark registration number and/or the number of the trademark application and data about the claim secured by the right of pledge.

The pledge shall be recorded in the appropriate register of the competent authority upon the request of the trademark owner and/or applicant or pledger.

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes.

Online issues

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 the Organisation and Management of the top Macedonian ‘.mk’ domain and the top Macedonian ‘.mkd’ domain.