Understanding Well-Known Marks and Renowned Trademarks Under Serbian Law: A Guide for Businesses

In today’s highly competitive markets, brand visibility is not enough; what truly secures a company’s position is widespread recognition. When a company’s sign reaches a level of distinctiveness and public familiarity, it transcends marketing and becomes a legal asset. For companies building consumer trust at home or internationally, recognition is not just a branding milestone – it is a competitive legal edge that can protect, empower, and elevate their market position.

Serbian intellectual property law recognizes that legal protection should reflect commercial reality. Some marks, through sustained use, strategic branding, and public recognition, become so strongly associated with a company’s products or services that they earn legal protection, even without formal registration. These are known as well-known marks. Another path to brand prominence is through registration and an established reputation. A renowned trademark combines formal protection with an exceptional reputation, offering an even wider legal shield for the companies.

The following sections explore how Serbian law defines and protects well-known marks and renowned trademarks, what criteria are considered in practice, and how these statuses can be leveraged to protect business interests more effectively.

1. What Is a Well-Known Mark Under Serbian Law?

Many companies assume that trademark protection starts and ends with formal registration. However, Serbian law recognizes a separate category of signs – well-known marks, that enjoy protection without ever being entered in the Trademark Register. What matters is not the paperwork and formalities, but how the relevant public perceives company’s sign.

If a particular sign is widely recognized by the relevant public in Serbia, it may be protected under the concept of a well-known mark, even in the absence of its registration. This legal mechanism is rooted in Serbia’s alignment with Article 6bis of the Paris Convention for the Protection of Industrial Property (hereinafter: “Paris Convention”), which obliges Serbia, as a member state of the Paris Convention, to refuse or cancel the registration and prohibit the use of trademarks that constitute a reproduction, an imitation, or a translation liable to create confusion with the mark that is considered by the Intellectual Property Office of Serbia (hereinafter: “IPO”) to be undoubtedly well-known in Serbia, and which mark is used for identical or similar goods or services. The same applies where the essential part of the mark constitutes a reproduction or an imitation that may create confusion with such a well-known mark.

This is further codified in Article 6 of the Serbian Law on Trademarks (hereinafter: “Law”), which explicitly prohibits protection for any sign that is identical or similar to a sign already used in Serbia by another person for identical or similar goods or services, where such sign is considered well-known within the meaning of Article 6bis of the Paris Convention.

What does this mean in practice? For example, if a company has consistently used a particular sign in commerce within Serbia and, as a result, the relevant public associates that sign with its goods or services, such a sign may qualify as a well-known mark under Serbian law.

Imagine a Serbian company XYZ whose gaming console ULTIMA has, over ten years, become widely recognized as the leading product in the region, a name synonymous with top-tier performance and quality, known by virtually every gamer in Serbia. Although the company XYZ never registered ULTIMA as a trademark, its reputation makes it a well-known mark. If another company tries to register ULTIMA for computer hardware, the company XYZ can prevent it, as Serbian law protects well-known marks from imitation likely to confuse, even without formal registration.

Therefore, this status grants the company a legal basis to oppose the registration of identical or similar marks for the identical or similar goods or services, even though the respective sign is not registered. In such cases, the burden of proving the sign’s recognition among the relevant public becomes central to asserting protection without formal registration. This form of protection is especially valuable for businesses that entered the market before registering a trademark.

For decades, Jat Airways was synonymous with air travel in Serbia and across the region. As the former national airline, its name and logo became deeply rooted in public consciousness. After the transition to Air Serbia, the JAT mark was not actively maintained in the trademark register. Still, its strong public recognition could have served as legal grounds for protection as a well-known mark.

2. What is a Renowned Trademark Under Serbian Law?

Some trademarks go beyond recognition, they become symbols of prestige, quality, and unmatched commercial identity. In Serbian law, these are known as renowned trademarks, and they benefit from extended protection far beyond the standard scope of trademark rights.

Under Article 16(3) of the TRIPS Agreement, countries must protect renowned trademarks even for goods and services that are not similar to those for which the trademark is registered, provided that the trademark is duly registered. This provision introduced a new category of trademarks – renowned trademarks that enjoy extended protection, allowing enforcement beyond the registered scope, including against use on non-competing goods or services.

Serbian law incorporates this protection in the Law on Trademarks, which provides special treatment for renowned trademarks – a sign cannot be registered as a trademark if, regardless of the goods or services it refers to, it is identical or similar to a previously protected trademark that is undeniably known among market participants in the Serbia as a mark of high reputation, where the use of such a sign would unfairly exploit the reputation of the renowned trademark or harm its distinctive character or reputation.

The trademark ADIDAS, registered in Serbia and known for its iconic three-stripe design, is considered a renowned trademark. Its recognition extends far beyond sports apparel, reaching consumers across various market segments. If a local company were to apply for the mark ADIDAS for services like IT consulting, cosmetic products, or even coffee shops, there is a high probability that the Serbian IPO would refuse registration. This is because such use would unfairly exploit the reputation of the ADIDAS brand and/or potentially dilute its distinctive character, even though the goods or services are not similar.

The core rationale of extended protection lies in the legal doctrine of trademark dilution. Unlike classic infringement, where the concern is consumer confusion, dilution targets a different risk: the gradual erosion of a trademark’s distinctiveness and its exclusive association with a particular source. The purpose of this protection is to preserve the unique position of a renowned trademark in the market to ensure that its symbolic and identifying power remains intact, regardless of the goods or services it is used for.

To determine whether a trademark qualifies as a renowned trademark, three key elements must be determined in each specific case:

• Whether the applied-for sign is identical or similar to the opposing trademark,
• Whether the opposing trademark is undeniably known among market participants in Serbia as a mark of high reputation (renowned trademark), and
• Whether the use of such a sign would unfairly benefit from the established reputation of the renowned trademark or harm its distinctiveness or reputation.

The Coca-Cola trademark is a textbook example of a renowned trademark with an exceptional reputation. Its global recognition, strong brand identity, and emotional consumer association make it one of the most protected trademarks in the world. In Serbia, even if someone were to register or use the same or a similar sign – for instance, “Kola Kola” — for completely unrelated products, like clothing or financial services, that would still be prohibited. Why? Because the sign is similar to the Coca-Cola trademark, the Coca-Cola trademark is undeniably known among market participants in Serbia as a mark of high reputation, and such use would unfairly benefit from its established reputation and diminish the distinctiveness of the iconic brand.

3. Is the Company’s Mark Famous Enough? The Legal Test for Well-Known Marks and Renowned Trademarks

Recognition is never presumed. Under Serbian law, in line with the Law on Trademarks and the WIPO Joint Recommendations on the Protection of Well-Known Marks, a mark’s reputation is assessed through a flexible but structured set of criteria. These factors are not cumulative requirements, but rather guidelines that help determine whether a mark qualifies as “well-known” in a particular context. They apply both to unregistered well-known marks and to registered renowned trademarks.

So, what counts when deciding if a mark is “well-known”? Let’s break it down:

• Degree of knowledge or recognition of the mark in the relevant sector of the public

It is not necessary for the company’s mark to be recognized by all individuals, but rather by the right audience, including people who buy or might buy the company’s product, or those involved in distribution channels. This can vary a lot depending on what the company is offering. For example, if the company’s product is sold in big supermarkets, then the average shopper represents the target audience. But if the company sells through a limited network, like certified dealers, online catalogs, for example, high-end medical equipment or industrial machinery, then the relevant public is not the average shopper in the supermarket. What matters is whether the actual customer base or sales channel knows and recognizes the brand.

• Duration, extent, and geographical area of use of the mark

In addition to the mere fact that the mark or trademark is used, it is also important to consider how long it has been used, how often, and how broadly. For example, if a brand of bottled mineral water has been on shelves nationwide for over a decade, advertised regularly, and available in major retail chains across the country, that points to a strong market presence. But if the same brand was only sold for a year in one small town through a local store, such limited use is unlikely to meet the standard. What matters is whether the mark or trademark has had consistent and visible use across the entire country, not just in a single narrow area.

• Duration, extent, and geographical area of any promotion of the mark, including advertising or publicity, and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies

If a certain brand selling, for example, professional-grade kitchen appliances, has been regularly advertised on national TV, featured in popular cooking magazines, and presented year after year at major hospitality and culinary trade shows, it’s far more likely to be recognized and remembered. On the other hand, if the same brand only handed out a few flyers at a local food fair once or ran a small online ad campaign for a month, that level of exposure probably would not be enough. To count, the promotion needs to be frequent, consistent, and visible across the entire country and industry scene.

• Duration, geographical area of any registrations, and/or any
  applications for registration

Wider and longer registration can help show that a brand is well-established and recognized. For example, if a company has registered its trademark not only locally but also in several countries, that suggests it is aiming for a broader market presence and that the brand is likely to have recognition beyond just one region. Compared to a trademark registered in only one small jurisdiction with no international filings, that kind of limited reach says much less about recognition or reputation.

• Record of successful enforcement of rights in the mark, in particular,
  the extent to which the mark was recognized as well-known by competent
  authorities

 If a company has successfully enforced its rights in the past, for example, if a court or the IPO previously stated that the mark is well-known in a dispute, that is a strong signal. If there were a situation where a national court stops another company from using a similar mark for related services, clearly stating in its decision that the original mark is qualified as well-known, such official recognition would carry significant weight and could serve as strong evidence in any future proceedings.

• The value associated with the sign

If the trademark has been the subject of licensing agreements, included in franchise deals, featured in a high-value brand valuation, or has been the subject of significant investment in brand development, that shows it is more than just a trademark; it is an asset.

To qualify as a well-known mark in Serbia, it is not strictly required that the sign has been used within Serbia itself. Use and recognition in other countries, especially in regions that share a common language (for example, Montenegro, Bosnia and Herzegovina, Croatia), regions that have the same media presence (such as TV or print), or regions with close commercial ties, can also be relevant. Factors like population movement (migration, tourism, trade), cross-border media coverage, and internet visibility all contribute to how familiar the public may be with the sign. In other words, well-known status is not always confined by borders, it can follow the brand across them.

Well-known status checklist for companies

✅ Who knows the company’s brand?

Is the company’s brand recognized by the specific audience that purchases or distributes its products or services?

✅ How long and how far?

 Has the company’s brand been in use consistently and widely across the regions where it operates?

✅ How loud is the company’s promotion?

Are the company’s marketing efforts reaching its target audience through national advertising, industry events, and relevant trade shows?

✅ Where is it registered?

Is the company’s trademark registered in multiple jurisdictions, or is it limited to a single country, or is it not registered at all?

✅ Have the company defended it successfully?

Have there been instances where legal authorities or intellectual property offices have acknowledged the company’s brand as well-known in disputes?

✅ Is it valuable on paper?

Has the company’s brand been subject to licensing agreements, formal valuations, or significant investments that reflect its market value?

4. Why It Pays Off for a Company to Build a Well-Known Mark or Renowned Trademark?

A well-known mark or renowned trademark is more than just a visual sign, it is a symbol of trust, quality, and commercial strength. Once the company’s sign gains broad public recognition, it becomes more than a brand asset. It becomes a legal advantage. Here is why it pays off for the company:

• Stronger protection within the relevant market. A well-known mark can prevent others from registering or using the same or similar sign for identical or similar goods or services, even without formal registration. A renowned trademark goes further: it allows the company to prevent the use of the same or similar sign on unrelated goods or services if such use would exploit the company’s reputation or harm the brand’s distinctiveness, even without causing consumer confusion.

• No expiration, no renewal fees. The value of a well-known mark comes from recognition, not from entries in the Trademark Register. As long as the relevant public perception endures, so does the protection. In contrast, a renowned trademark must be formally registered, and its extended protection depends on maintaining that registration and reputation.

• Higher compensation in case of infringement. Courts recognize the reputational and economic weight of a well-known mark and a renowned trademark. This means the company may claim higher damages and stronger remedies when unauthorized use or other infringement occurs.

• It enhances both companies’ brand and corporate credibility. Being recognized as a holder of a well-known mark or renowned trademark elevates not just the company’s product, but the company’s standing in the market. It communicates leadership, consistency, and trust.

• It strengthens the company’s legal and commercial leverage. Whether the company is negotiating with investors, entering an M&A transaction, or just strengthening its IP portfolio, a well-known brand signals commercial strength and established market presence.

• It drives consumer loyalty. Well-known marks and renowned trademarks carry powerful associations, quality, prestige, and reliability. These values translate directly into stronger sales, deeper customer loyalty, and long-term competitive advantage. For instance, consider Mercedes-Benz. The company’s exceptional brand loyalty is evident, with a 49.0% loyalty rate in 2024 among premium car owners in the U.S., ranking second in its segment. This loyalty stems from Mercedes-Benz’s consistent delivery of quality, innovation, and a cohesive ecosystem that resonates with its users.

5. What Happens When Someone Infringes a Well-Known Mark or Renowned Trademark?

When a third party attempts to capitalize on the recognition the company has earned, Serbian law offers a comprehensive set of remedies tailored to both well-known marks and renowned trademarks. Whether the company’s sign is unregistered but widely recognized, or formally registered and of exceptional reputation, the companies are not without recourse.

These legal tools include:

1. Opposition and/or Third-Party Observation

If another party files a trademark application that imitates the company’s well-known mark or renowned trademark, the company can act promptly during the registration procedure before the IPO. This can be done by two procedural mechanisms – either by filing a formal opposition or by submitting a third-party observation within the applicable statutory deadlines.

2. Cancellation (Declaration of Invalidity)

Even if the infringing trademark has already been registered, the company is not out of options. The company can request that the trademark be declared invalid if it conflicts with the company’s well-known mark or renowned trademark. This legal procedure, available at any point during the trademark’s protection period, targets registrations that should never have been granted in the first place. A successful invalidity claim has a retroactive effect, nullifying the infringer’s rights as if they had never existed. In cases of bad faith, there is no time limit for initiating the procedure, making this an especially powerful remedy for long-standing misuse of the company’s reputation.

3. Claiming Ownership Before the Court for Well-Known Marks

If the company has been using a sign in the course of trade to identify its goods or services and another party subsequently applies for registration or registers that same or a similar sign for identical or similar goods or services, the company may file a lawsuit requesting to be declared the rightful applicant or trademark holder.

To succeed, the company must prove that its sign was already a well-known mark within the meaning of Article 6bis of the Paris Convention for the marking of goods or services before the defendant filed the trademark application or obtained registration. This legal remedy must be exercised within five years from the date the disputed trademark was entered into the Trademark Register.

4. Civil Compensation for the Infringement

The company may also pursue compensation for the damage caused by the infringement of the company’s well-known mark or renowned trademark. This includes financial losses, harm to its reputation, or unjust enrichment gained by the infringer. Serbian law allows courts to award monetary damages under general civil liability rules.

Here is one example from foreign case law, where this area is among the most developed –In the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC (U.S., 2023), VIP Products manufactured a dog toy called “Bad Spaniels,” which closely mimicked the distinctive shape and label of the Jack Daniel’s whiskey bottle, replacing key text with humorous phrases. Jack Daniel’s argued that the toy infringed on and diluted the distinctiveness of its renowned trademark. VIP Products claimed that the toy was a protected parody under the First Amendment. However, the U.S. Supreme Court unanimously ruled in favor of Jack Daniel’s, stating that when parody is used not merely as commentary but as a source identifier (i.e., as a trademark), it is subject to standard trademark infringement laws. The decision significantly strengthened the position of renowned trademark holders in protecting their brands against unauthorized uses that could harm their reputation.

6. Well-Known Mark vs. Renowned Trademark

Given how similar these two categories may seem and how often they are confused in practice, now that we have covered the legal implications of both, it is a good moment to step back and compare them side by side. While “well-known mark” and “renowned trademark” might sound alike, they represent two distinct legal concepts, with different paths to recognition, enforcement standards, and scope of protection. The table below highlights what sets them apart: