The New Law on Trademarks – Step Ahead into the Future

The new Law on Trademarks entered into force on February 1, 2020. 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 introduces changes that hold great commercial value.

Among some of the novelties and changes, we highlighted the following:

Opposition System and The New Proceedings Framework

The opposition system in the trademark registration proceedings is the most important novelty under the new Law. By introducing the opposition system, the trademark registration proceedings is 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 enabled 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 newly 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 which would infringe their rights.

Exhaustion System Change – Parallel Imports

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 will certainly feel the effects of this change.

The change is as follows:

The changes made to the Law allow parallel imports. This means that now 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, the new solution represents the success of the Commission for Protection of Competition and will bring joy to parallel importers.

New – Special Reasons for Rejecting the Trademark Registration Application

In addition to the absolute and relative reasons for rejecting the application, the Law introduces 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.

Trademark Renewal

The application for renewal of the trademark should be filed at least 6 months ahead of the expiry of the registration, along with a proof of the payment of the prescribed fee. A significant novelty is 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. However, it should be noted that although the Intellectual Property Office has the obligation to send a notification, it does not hold responsibility for the renewal failure on behalf of the trademark holder.

Trademark as an Object of Enforcement

Trademark can be an object of enforcement now, and that is noted in the Registry of Trademarks.

Judicial Proceedings

An important novelty 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. Also, a provisional measure may be imposed against the intermediary.

Concerning court proceedings, the Law provides for many possibilities for imposing provisional measures, and the procedure for providing evidence is now much more regulated.

Trademark Expiry Due to Non-Use

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.

Assignment of the Right of Use by the License Agreement

The trademark holder or the applicant may assign the right to use the trademark or the application rights concluding a license agreement. The novelty is that 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.

The novelties and changes we mentioned in the text are not the only ones but are highlighted as the most significant ones.

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