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Rights and protection
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.
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).
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?
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.
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