Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.
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.
Click here to view the full article.