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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?
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.
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