Overview of Serbia Trademark Registration Service

Background

The Kingdom of Serbs, Croats, and Slovenes was formed in 1918. Its name was changed to Yugoslavia in 1929. The partisan military and political movement headed by Josip Tito took full control of Yugoslavia when German and Croatian separatist forces were defeated in 1945. In 1989, Slobodan Milosevic became president of the Serbian Republic based in part on a platform of Serbian nationalism. In 1991, Croatia, Slovenia, and Macedonia declared independence, followed by Bosnia in 1992. The remaining republics of Serbia and Montenegro declared a new Federal Republic of Yugoslavia (FRY) in April 1992. Milosevic became president of the FRY in 1997. In 1998, ethnic violence in the formerly autonomous Serbian province of Kosovo led to the intervention of the North Atlantic Treaty Organization (NATO) and the United Nations (UN). This intervention culminated in the promulgation of a constitutional framework that allowed Kosovo to establish institutions of self-government and hold its first parliamentary election. FRY elections in September 2000 led to the ouster of Milosevic and installation of Vojislav Kostunica as president. A broad coalition of democratic reformist parties known as DOS (the Democratic Opposition of Serbia) was subsequently elected to parliament in December 2000 and took control of the government. In 2003, the FRY became Serbia and Montenegro, a loose federation of the two republics with a federal-level parliament. Violence erupted in Kosovo again in March 2004 causing the international community to open negotiations on the future status of Kosovo in January 2006. In May 2006, Montenegro invoked its right to secede from the federation and, following a successful referendum, it declared itself an independent nation on June 3, 2006. Two days later, Serbia declared that it was the successor state to the union of Serbia and Montenegro. A new Serbian constitution was approved in October 2006 and adopted the following month. This was followed by 15 months of inconclusive negotiations mediated by the UN and four months of further inconclusive negotiations mediated by the U.S., EU, and Russia. On February 17, 2008, the Province of Kosovo, administered by the UN Interim Administration Mission on Kosovo (UNMIK), declared itself independent of Serbia.

Who May Apply?

Foreign nationals have the same rights to apply for registration, provided that treaties, conventions, or reciprocity exists between their country and Serbia. The first applicant has a right of priority, but a prior user may contest a registration within five years from the date of registration.

What Can Be Registered?

The new Trademark Act, published in the Official Gazette No. 61 of December 24, 2004, and effective January 1, 2005, broadened the scope of what may be registered. Under Articles 1 and 4, any mark capable of distinguishing the goods or services of one person from those of another, and which is capable of being represented graphically, may be registered as a trademark or service mark. Marks may therefore consist of words, pictures, expressions, vignettes, titles, figures and combinations thereof, or combinations of colors. In addition, the law contains a list of relative and absolute grounds for refusal1 or in~alidationT.~h ese grounds are similar to those cited in the European Union's Directive 891104lEEC. For the first time, a trademark will not be registered or, if registered, will remain vulnerable to cancellation if it conflicts with an identical or similar prior "famous" mark previously registered for similar or dissimilar goods or services. A well-known mark is defined as a mark indisputably known in Serbia as a trademark of strong reputation, used by another for marking goods or services. This definition is consistent with the definition found in the Paris C~nventionI.t~ i s not necessary that the use of the later mark would take unfair advantage of or be detrimental to the distinctive character or repute of the prior well-known mark. A conflict with a prior "well-known" mark may now result in refusal of an application for registration of a later mark or, if it has been registered, invalidation of the registration of the later or junior mark. In the event of a conflict with prior third-party rights, registration will not be granted even with the consent of the proprietor of the holder of the prior right. In ascertaining whether a mark is registrable, all the circumstances will be taken into consideration, particularly the duration and scope of use of the mark. Geographical names are separately registrable as designations of origin.

What Cannot Be Registered?

Under the Trademark Act, a trademark may not be used to protect a mark that:' 1. is generally considered immoral or disruptive to public order; 2. has a general appearance that does not enable goods and/or services to be distinguished in the course of trade; 3. represents a shape determined exclusively by the nature of the product or a shape necessary to obtain a given technical result; 4. designates exclusively the type, purpose, time, or method of production, quality, price, quantity, weight, or geographical origin of the goods and/or services; 5. is customarily used to designate a given type of goods and/or services; 6. by its appearance or content, may create confusion in commerce with respect to the origin, type, quality, or other characteristics of the goods and/or services; 7. contains official marks or hallmarks of quality control or warranty or imitations thereof; 8. is identical with a protected mark of another person for identical or similar goods and/or services; 9. is similar to a mark already protected on behalf of another person for identical or similar goods and/or service, if such similarity may lead to confusion in commerce or is misleading; 10. is identical or similar to a mark for identical or similar goods andlor services, which is well-known in Serbia within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property; 11. regardless of the goods and/or services concerned, is a reproduction, imitation, translation, or transliteration of a registered trademark, or the essential segment thereof, which is known without any doubt to those participating in commerce in Serbia as a mark of widespread reputation, (hereinafter a "famous trademark"), used by another individual or entity for marking goods and/or services, if the use of such a mark would result in an unfair benefit from the reputation acquired by the famous trademark or in harm to its distinctive character and/or reputation; 12. by its appearance or content, infringes a copyright or industrial property rights; 13. consists of a state or other public coat of arms, flag or other emblem, name or abbreviation of the name of a country or of an international organization, or imitations thereof, unless the competent authority of the country or organization concerned has given its authorization for such use; or 14. represents or imitates a national or religious symbol. Marks ineligible because of a lack of distinctiveness based on the grounds in paragraphs 2,4, and 5 above may be registrable if the applicant can show that the mark has become distinctive for the goods and/or services through use of the mark. The grounds for refusal based on similarity described in paragraphs 8 and 9 above apply equally to prior filed pending applications. Thus, subsequently filed applications for registration may be refused based on the similarity of the mark and goods and/or services to those in a prior filed application. However, these grounds for refusal will cease to exist if the prior filed application is refused. In determining whether a mark is famous, the Office considers the awareness of the relevant part of the public about the mark, including any knowledge gained through promotion of the mark. The relevant part of the public generally consists of actual and potential users of the goods andlor services which bear the mark, as well as persons involved in the distribution channels of the goods and/or services. The likeness or name of a living person may be protected as a trademark only with that person's consent. The likeness or name of a deceased person may be protected as a trademark only with the consent of any living parents, spouse, or children of the deceased person. The likeness of a historically significant person or other deceased famous person may be protected as a trademark only with the authorization of the competent authority and the consent of the person's relatives up to the third degree of kinship.

Rights

The registration of a name as a mark or part of a mark does not prevent an individual from using his or her own name or that of his or her firm if adopted in good faith for distinguishing goods andlor services.

Filing Requirements

The following requirements are necessary for applications for registration: 1) Power of attorney, simply signed, (i.e., without notarization or apostille); 2) Two copies of a list of the goods and/or services, with their International Classification(s); 3) Drawing of the mark ("printing block") with 10 copies or prints (for both word and design marks), at least three centimeters by five centimeters, but not more than eight centimeters by eight centimeters (for color marks, four prints in color and six prints in black and white). Priority under the Paris Convention must be claimed when the application is filed. A certified copy of the underlying foreign application or registration must be filed in support of the priority claim within three months of the application filing date. If the foreign application or registration is in a foreign language, it must be accompanied by a certified translation.

Evaluation & Review

Applications for registration of trademarks must be filed at the Intellectual Property Office (IPO). The Office first examines each application for completeness. If the Office finds that the application does not meet the formal requirements, it will notify the applicant. If the applicant does not reply within the time allotted by the Office, the Office will deem the application abandoned.' Applicants may request an extension of this response deadline for up to three months. The grounds for such an extension include the need to communicate with a foreign applicant, the absence of a person necessary to respond, and illness of the applicant's attorney. The Office generally grants such extensions if they are reasonable. If the application meets the formal requirements, the Office examines the mark both on its own merits and in relation to any conflicting prior registrations or previously filed applications. If a conflicting mark is found, the Office notifies the applicant and provides a deadline during which the applicant must reply. This deadline may also be extended at the request of the applicant. National priority is determined as of the date the application is filed. Such priority may be claimed, for instance, within three months of the opening date of an officially recognized exhibition at which the mark is used. Under the International Convention, priority may be asserted within six months of the filing of the first Convention application.

Duration

Trademark registrations may be renewed for. unlimited 10-year periods with payment of the necessary renewal fee. The renewal deadline may be extended for a period of six months with the payment of an additional penalty fee equal to half the amount of the original fee. An additional fee must be made for each class of goods and/or services.

Use

Use is compulsory. However, the law does not require registrants to prove use of the mark unless a cancellation action on the grounds of nonuse is filed against the registered mark. A third party may request cancellation of a registration on the ground that the mark has not been used in Serbia for a period of five consecutive years. A registrant may prevail in any such action if he or she is able to show that the mark was used during the five years in question. A request or petition for cancellation will also fail if, although the registrant has not used the registered mark for an uninterrupted period of five years, the registrant subsequently uses the mark in good faith before the filing of the petition for cancellation. Thus, use during the five-year period in question and use after the five-year period will both result in the rejection of the cancellation action. In reaching a decision concerning cancellation, the Intellectual Property Office will take into consideration the circumstances surrounding the failure to use the mark, including any nonuse that may be excusable due to conflicting Serbian regulations. The Office will also consider any bad-faith failure to use the mark, such as attempts to block the use of similar marks in the Serbian market. Advertising the registered trademark without the intent to provide the relevant goods and/or services does not constitute acceptable use of the mark. Likewise, the mere payment of renewal fees or the entry into contracts or other legal agreements in relation to the mark also do not constitute use. However, the legitimate use of a mark by a licensee constitutes valid use by the mark owner.

Domain Names

The top-level domain of Serbia is ".rs." The Serbian National Register of Internet Domain Names is the sponsoring organization for the .rs domain.' The top level domain of Yugoslavia was ".yu." Serbia is in the process of phasing out use of the .yu top-level domain. Thus, many organizations with domain names registered under the .yu domain have moved their registrations to the .rs (Serbian) domain. As of December 1, 2008, the Serbian National Register of Internet Domain Names (RNIDS) registered more than 44,000 domain^.^ This migration will continue until March 2, 2009. Thereafter, the operation of any unrenewed .yu domains will cease. This period will be followed by an additional period during which .yu domains may be renewed, running from March 3, 2009, to April 30, 2009. Domains that are renewed will be temporarily operative and will remain .yu domains. Those that are not renewed by April 30, 2009, will be permanently deleted on May 4, 2009. On September 30, 2009, the maintenance of a register for .yu domain names will be discontinued entirely for all .yu domains whether renewed or not. Only companies and organizations located in Serbia are eligible to apply for domain names. Foreign companies and organizations may only be granted a domain name registration if they have a local office or representative in Serbia. Individuals are not eligible to obtain a domain name. The registration of a domain name does not confer any legal rights to that name. Moreover, the registrant is responsible for any liability that their registration of a domain name creates. Disputes over the right to use a domain name must be resolved between the parties through civil court action or through UDRP (Uniform Dispute Resolution Policy) proceedings.

Enforcement

Infringement is provided for in Chapter VI of the Customs Law, which incorporates provisions of the TRIPS Agreement (Trade-Related Aspects of Intellectual Property right), the Madrid Agreement, European regulations, and the National Model Law of the World Customs Organization (WCOL3 Trademark owners must register their intellectual property rights with the Customs authorities and provide sufficient information to enable Customs officials to recognize the goods in question and verify that the applicant has rights related to any questionable goods. Under the new Trademark Law,4 preliminary injunctions may be requested from the court where infringement of a mark has occurred. It is also possible for a court to order seizure of the infringing goods as a provisional measure before the court renders any final decision in an infringement suit. Requests to Customs authorities for surveillance must be in written form and may either be specific to a particular shipment or have general effect to all goods. The Customs authorities will issue a decision concerning any surveillance request within 30 days or less. However, if the applicant provided Customs with specific information about a particular shipment or consignment of goods known to be infringing, Customs will issue a decision concerning the applicant's request within three days.