TRADEMARK REGISTRATION – EVERYTHING YOU WANTED TO KNOW, BUT COULDN’T ASK

08
Feb 2019

You’ve decided that the trademark registration is the right option for you. You wish to know what the next steps are or you are unsure on what can be protected, who can be a trademark holder, what does the procedure imply, and what is the amount of the anticipated investment. In this blog post, we tried to answer the most common clients’ questions, in simple terms and plenty of examples, who contact our law firm regarding this matter.

If you have not decided to register a trademark, but simply wish to understand the benefits of a trademark registration, please proceed to 6 Reasons Why Trademark Registration is Crucial for Your Business.

What is a Trademark?

A trademark is the right to protect the mark, which serves the purpose in the trade of goods to differentiate goods or services of a natural or legal person from the same or similar goods or services of another natural or legal person.1

A trademark is also considered a trademark if it has been granted international registration for the territory of Serbia. We wrote on the topic of differences between national and international trademark application, trademark, their mutual relationship, registration procedure, and related issues, in our blog post International or National Trademark Registration – What is Better for Your Company?.

The trademark may be:

  •  Individual trademark
  • Collective trademark: a trademark of a legal entity representing a certain form of association of manufacturers or service providers, who are entitled to use entities that are members of that association; and
  • Warranty trademark: a trademark that is used by several companies under the supervision of the trademark holder. It serves as a warranty of

PRINCIPLE OF SPECIALTY: TRADEMARK IS ASSOCIATED TO GOODS OR SERVICES

The mere concept of a trademark contains two inseparable elements: the mark and the goods/service which the mark signifies. The connection between these two elements is called the principle of specialty.

Primarily, that means that the mark can be protected by a trademark provided that the goods /services are defined.

The principle of specialty further implies that two distinct trademarks may protect the same mark, provided they indicate different goods/services. Either way, the more similar the trademarks, the goods/services in a matter must be as distinctive as possible. An exception to this principle is the so-called well-known mark. This means that the mark which is the same as the well-known mark cannot be registered, whether or not the protection is requested for goods/services that are completely different than those marked by a trademark. Coca Cola is an example of a well-known mark.

What Does the Principle of Specialty Convey in Practice?

Due to the principle of specialty, when performing a search for a mark that you plan on protecting with a trademark, you must also look at the list of goods/services that mark the same or similar mark which has been trademarked. Most people miss this step and give up the desired mark when, for example, they see a similar mark in the national trademark database. This search can be complicated despite the explanations on the website of the Intellectual Property Office of the Republic of Serbia (hereinafter: “IPO”), as well as on foreign websites.

It should be mentioned that the IPO provides the possibility to file a search request with the so-called, trademark search. However, even when you get the search result, it is necessary for someone to analyze it professionally. That is because the report on the trademark database search does not explicitly state: “You can/cannot register that mark.” The analysis is performed with a good knowledge of the IPO‘s practice and jurisprudence regarding questions of the fulfillment of the criteria for registration. In fact, in case you are not familiar with the trademark database search, as well as the results of the solution, you may come to the wrong conclusion, which may negatively impact the process of building your brand.

Finally, we should mention that the IPO states that the data in the report serve merely to inform, and do not represent any opinion or instruction.

What do the Standards Similar & Different Mean Under the Law on Trademarks?

These standards are frequently mentioned in the Law on Trademarks, which is to be expected, as the standards are entwined into the notion of a trademark. Therefore, it is necessary to understand these terms properly, i.e., understand their meaning under the Law on Trademarks.

In order to illustrate the level of complexity of this matter and the way a particular finesse may determine the right answer, we will list the examples of goods which IPO considers to be similar, i.e., different.

Firstly, to clarify one thing: the very fact that some goods are classified within the same class or broader category does not automatically mean that those goods are similar. For example, cakes and meat are classified in food products, but are not considered similar. Chocolate and juices are also different products, although they are food products intended for human consumption.

On the other hand, all non-alcoholic beverages are considered similar. The same applies to products of rare or precious metals, such as, for example, gold or silver.

The most important criterion for determining the similarity of goods is the purpose of the goods. For example, although footwear and clothing are different goods by their nature, they will nevertheless be considered similar to each other as they have a similar purpose. The same goes for pharmaceutical substances and band-aids – they are considered similar since they serve a similar purpose (they are intended to treat people). Due to the fact that hardware and software serve to perform a unique function (computer operation), they are considered similar, although they are actually not by nature.

On the other hand, gold jewelry and costume jewelry are considered to be competing goods, which makes them similar to each other in this context.

Bearing in mind that Serbia is an EU membership candidate and is obliged to align its intellectual property law with the EU law, IPO monitors court practice in the EU. That implies good knowledge of intellectual property rights in the EU.

That is paramount to emphasize, as the answer to the question of what is (not) a similar product or service can come as a surprise.

For example, the EU Court has found that salted biscuits are not similar to the category of sweet biscuits in one case, and has also found that the verbal mark “FERRO” is not similar to the verbal mark “FERRERO”.

In any event, the similarity of goods/services is analyzed taking into account more criteria, including the nature of the goods/services, their purpose, the way of use, who are current or potential buyers, where is the usual place of sale for those goods and other criteria.

What Can Be Registered With a Trademark?

According to the Law on Trademarks, a mark can consist of words, slogans, letters, numbers, pictures, drawings, color schemes, three-dimensional forms, combination of these characters, as well as musical phrases expressed in music notes, etc.1 In order to exemplify, we will mention only some of the examples of registered trademarks.

WORDS (regular letter type)

WORDS (special letter type)

SLOGANS

LETTERS (Stylized)

PICTURES

DRAWINGS

COLOR SCHEMES

THREE-DIMENSIONAL SHAPES

COMBINATION OF SAID MARKS

WHAT CANNOT BE REGISTERED BY A TRADEMARK?

Article 5 of the Law on Trademarks stipules what cannot be protected by a trademark. You cannot protect a mark with trademark if that mark is1:

which is contrary to the public order or accepted moral principles, for example, slogans containing curses and cuss words;

which in its general appearance is not suitable for differentiating goods or services in trade of goods, e.g. ordinary green circle, a regular letter A and the like;

which consists exclusively of a three-dimensional shape determined by the nature of goods or forms of goods necessary to obtain a particular technical result or a form which significantly affects the value of goods, for example, a regular key, in no way different from all others;

which consists exclusively of labels or data that can be used in trade to indicate the type, quality, quantity, purpose, value, geographical origin, time of production of goods or the provision of services, or other characteristics of goods or services, ULTRACLEAN for classes: 3, 5 MK2;

which has become commonplace to designate a certain type of goods or services in everyday speech or in good commercial practices, for example, FIRST MINUTE for Class 39, 43 MK, and LAST MINUTE for Class 39, 43 MK3;

which may be misleading to trade participants by their appearance or content, regarding, for example, types, quality or geographical origin of goods or other properties of goods or services, e.g. picture of peppers on a pickle jar and the word “peppers”;

which contains official marks or hallmarks indicating quality control and warranty or imitates them, except by written permission of the competent authority, e.g. ISO standard mark;

which is identical to the previously protected trademark for the same kind of goods or services;

which is identical to the previously protected trademark of another person for a similar type of goods or services, or similar to the previously protected trademark of another person for the same or similar type of goods or services, if there is a likelihood that such identity or similarity creates confusion in the relevant part of the public, which also includes the likelihood of bringing that sign with a previously protected mark;

which is identical or similar, for the same or similar type of goods or services, as a sign of another person known in the Republic of Serbia in the sense of Article 6ter of the Paris Convention for the Protection of Industrial Property (the so-called well-known mark);

which, regardless of the goods or services to which it relates, is the reproduction, imitation, translation or transliteration of the protected mark of another person or its essential part, which is undoubtedly known as a mark of high reputation among the participants in trade in the Republic of Serbia (the so-called well-known trademark), if the use of such mark would undermine the gain from the reputation of the famous trademark or would be detrimental to its distinctive character or reputation;

which violates copyright or other industrial property rights with their appearance or content;

which contains a national or other public coat of arms, flag or symbol, the name or abbreviation of the name of a country or international organization, as well as their implication, except under the approval of the competent authority of the country or organization concerned, flag or coat of arms of the Republic of Serbia;

representing or reflecting a national or religious symbol, e.g. Orthodox Cross, Jesus Christ, etc.

To illustrate, we also provided examples of rejected applications for trademark registration:

Therefore, there are various reasons why a trademark registration application may be refuted. For this reason, the prior expert search procedure is the most important in the registration procedure, i.e., a detailed investigation of whether the desired mark is eligible to be protected by a trademark.

What is a Brand Compared to a Trademark?

A brand is, we can agree, rather difficult to define, bearing in mind that it appears ranging from mark, trademark, to the overall reputation of a particular manufacturer (goodwill)1. The purpose of the trademark is to protect the entire import invested in brand development. For this reason, even though the trademark formally protects only a mark, indirectly, a trademark provides protection not only to the mark but also to the reputation and the brand.

Who May Be a Trademark Holder?

Company owners who decide to register a trademark mainly have a dilemma on who will be the trademark holder. Whether they should be holders as natural persons or should the company be a trademark holder.

Formally, a holder can be a company and a physical person. The answer to this question depends on a case to case basis, and mostly depends on the owner’s plans. If the owner chooses to be a trademark holder, they conclude a license agreement with their company as a natural person. In other words, the owner gives a license to their company to use a trademark.

If the trademark is registered to a company, the trademark then belongs to all persons who are members of the company in accordance with their shares. In case the company ceases to exist, the owner must transfer the trademark to themselves as a natural person, of course with the consent of other members. This process may take place in the process of liquidation, bankruptcy proceedings or immediately before the closure of the company, contract and registration in the IPO.

Commonly, if you wish to invest in the value of a company, it is recommended for the trademark holder to be a company in order for the intellectual property to remain to the company.

How Much Does the Trademark Protection Cost?

When you decide to protect the trademark, you should count on two types of fees:

1) Fee for filing an application for the recognition of a trademark;

2) Fee for obtaining a trademark, i.e., registration fee, and the first 10 years of validity of the trademark.

1. FEE FOR FILING AN APPLICATION FOR THE RECOGNITION OF A TRADEMARK

We will illustrate the fee for filing an application for the trademark on the example of an individual trademark:

For the collective trademark and warranty trademark, the fees are as follows:

• Basic fee = 30,870 RSD (when the goods and services declared are classified into up to 3 classes);

• + 4,640 RSD on top of basic fee, for each subsequent class after the third class, when the declared goods and services are classified in more than 3 classes (e.g., for additional 2 classes, this would be: RSD 30,870 + RSD 9,280 = 40,150 RSD);

• + 4.640 RSD for the figurative element (e.g., drawing or words printed in a special font)

2.  FEE FOR OBTAINING A TRADEMARK AND THE FIRST 10 YEARS OF VALIDITY OF A TRADEMARK.

Note: This fee is payable only when the IPO decides that the registered trademark can be protected by a trademark. Therefore, you should wait to receive a Conclusion on payment of fees from the IPO.

1 Article 1, paragraph 2 The Law on Trademarks (“Official Gazette of the Republic of Serbia”, No. 104/2009, 10/2013 and 44/2018 – state law)
2 Article 4 The Law on Trademarks (“Official Gazette of the Republic of Serbia”, No. 104/2009, 10/2013 and 44/2018 – other law)
3 Article 5 of the Law on Trademarks in paragraphs 2, 3, 4, 5, 6, 7 and 8 specify in which cases, or under what conditions some of the following marks may be protected by a trademark.
4 An example taken from the Intellectual Property Office website, Examples of Characters that can not be protected by the IPO, available at: http://www.zis.gov.rs/upload/documents/pdf_sr/pdf_zigovi/Primeri%20znakova%20koji%20ne% 20mogu% 20da% 20se% 20stite% 20zigom.pdf, on January 4, 2019
5 As hereunder

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