Stay in the loop with the most important updates
Contact: Tijana Žunić Marić
The current Law on Trademarks entered into force on February 1, 2020. It was expected that the changes made under the new Law should bring the national legislation closer to the European standards in the trademark law. Aside from the novelties related to trademark proceedings (registration, renewal, etc.), the Law also introduced changes that, turns out, hold great commercial value.
Among some of the more significant novelties and changes, we highlighted the following:
The opposition system in the trademark registration procedure is the most important novelty under the new Law. By introducing the opposition system, the trademark registration proceedings are now as follows:
The opponent may file a notice of opposition within 3 months of the publication of the trademark application. That can be done on the grounds of relative and special reasons. It is of great importance to note that the Law also enables the applicant to file a response to the opposition notice (within 60 days of receiving the opposition).
Publication of the application in the official gazette is also introduced. As aforementioned, the opposition notice can be filed 3 months from the date of publication of the application. The publication aims to increase transparency in the trademark registration process and to enable opponents to stop the registration of a trademark that would infringe on their rights.
In addition to the previously mentioned opposition, the change of the provision concerning the exhaustion of rights constitutes the most significant novelty of the Law in the commercial sense. The economy has certainly felt the effects of this change.
The change is as follows:
The changes made to the Law allow parallel imports. This means that the trademark holder cannot prohibit third parties from reselling goods that are legally placed on the market anywhere in the world. Bearing in mind the “struggle” of the competent institutions over this issue, this solution represents the success of the Commission for Protection of Competition and brings joy to parallel importers.
In addition to the absolute and relative reasons for rejecting the application, the Law has introduced the so-called special reasons. The company registered before the date of applying for trademark registration, or before the date of priority of that application, can file an opposition notice. This notice may prevent the registration of a trademark if the name of the company or a substantial part of it is identical or similar to the sign in the application, and the goods or services which are the subject of the company’s activity are identical or similar to those in the application and are used in traffic unless the applicant for the trademark had a company of the same or similar name at the time of filing it.
Also, the opposition notice of the trademark holder prevents the sales agent or the applicant’s representative from filing an application in his name without the permission of the trademark holder and having his registration approved, unless they justify their actions. This provision aims to achieve a protective function and to prevent abuses that have occurred in practice.
The application for renewal of the trademark should be filed at least 6 months ahead of the expiry of the registration, along with proof of the payment of the prescribed fee. In 2020, the Law introduced the duty of the Intellectual Property Office to notify (remind) the trademark holder of the expiry of the registration, at the earliest 6 months before the expiration of the registration. The introduction of these provisions proved to be very useful because it often happened that the holders either knowingly or unknowingly missed the deadline for payment of the administrative fees, and thus lose the trademark. However, it should be noted that although the Intellectual Property Office must send a notification, it does not hold responsibility for the renewal failure on behalf of the trademark holder.
Starting from 2020, trademarks can be an object of enforcement now, and that is noted in the Registry of Trademarks at the request of the parties or the competent authority conducting the enforcement procedure.
An important novelty introduced by the current Law is that a right infringement lawsuit can also be filed against the person whose services were used in the infringement (intermediary), not only against the one who violated the right. A provisional measure may be imposed against the intermediary as well.
Concerning court proceedings, the Law provides for many possibilities for imposing provisional measures, and the procedure for providing evidence is now much more regulated compared to previous regulations.
In terms of the current Law, the trademark shall expire on the date on which the application for termination of the trademark for non-use is filed.
Previously, the trademark would expire within five years from the date on which the trademark was last used, that is, a period of five years from the date of registration of the trademark in the event of non-use.
The trademark holder or the applicant may assign the right to use the trademark or the application rights by concluding a license agreement. In case there is more than one trademark holder, the conclusion of the license agreement requires the consent of all unless otherwise agreed between them.
Now that you are familiar with the novelties introduced into our legislation with the Law on Trademarks of 2020, do you think that the adoption of the new law is a step towards improving domestic regulations in this area? If this topic seems complex to you and you would like to get acquainted with the basics of trademark law and the procedure of trademark registration, feel free to have a look at our text on the most common questions regarding trademark registration.