International trademark registration appears to be somewhat peculiar and “upside-down” in relation to the national trademark registration. What do we mean by that? The procedure works the same way, regardless of the type of the application filed, i.e., you are supposed to wait for a positive decision by the competent authority, after which the right is acquired (in this case, a trademark is registered). The procedure is essentially the same with the national trademark registration. You should wait in order to get the trademark certificate and then you know that your sign has passed all the tests and has been registered. However, international trademark registration works a bit differently, which is completely understandable from the practical point of view.
How is this reflected in practice? Firstly, a trademark is registered or entered into the register of international trademarks at the international level. From that moment on, the authority of the country in which territory the protection is sought (usually some foreign institution, such as our Intellectual Property Office) has a certain period (12-18 months) to inform the applicant whether their sign has been registered in that country. It is now apparent why we say the procedure is a bit “upside-down”: they first register your trademark, and then you wait for the deadline to pass, during which the application can be rejected.
It would be best to think of this procedure as entering the trademark into a database of the International Bureau, rather than an actual registration, even if that is the term being used. So, the International Bureau first registers (enters) the international trademark, but the trademark has not yet been registered in a specific country (the so-called “designated country”). From the moment the International Bureau registers a trademark, the deadline (12-18 months) starts to run for the specially designated country within which period the country may refuse the registration of the trademark. The reasons for refusal could be found in the provisions of the Paris Convention. In the event of a refusal, you will need an attorney to know how to appeal against a decision of refusal, to whom, within which deadline…The level of complexity of this stage in the procedure is best demonstrated by the fact that the Intellectual Property Office itself recommends that applicants hire an intellectual property attorney. Moreover, do not expect to receive the decision of refusal in the Serbian language, as it is delivered only in English, French and Spanish.