- I. GENERAL PROVISIONS
- II. SUBJECT - MATTER AND CONDITIONS FOR PROTECTION
- III. PROTECTION PROCEDURE
- Common Provisions
- Initiation of the Proceedings for Trademark Registration
- Application for Registration of a Collective and Warranty Trademarks
- Register of Applications
- Filing Date of an Application
- Priority Right
- Formal Examination of the Application
- Withdrawal of the Application
- Division of the Application
- Examination of Conditions for the Grant of Trademark
- Entry in the Trademark Register
- Publication of the Recognized Right
- IV. INTERNATIONAL REGISTRATION OF TRADEMARKS
- V. CONTENT, ACQUISITION AND THE SCOPE OF RIGHTS
- VI. CHANGES IN THE APPLICATION AND/OR TRADEMARK REGISTRATION
- VII. TERMINATION OF RIGHTS
- VIII. DECLARATION OF INVALIDITY OF A TRADEMARK
- IX. SPECIAL CASES OF TRADEMARK TERMINATION
- X. CIVIL LAW PROTECTION
- XI. PENAL PROVISIONS
- XII. TRANSITIONAL AND FINAL PROVISIONS
THE LAW ON TRADEMARKS1
Article 1 This Law shall govern the manner of acquisition and the protection of rights with respect to marks used in trade of goods and/or services.
A trademark shall be the right that protects a mark used in the course of trade to distinguish goods and/or services of one natural or legal person from identical or similar goods and/or services of another natural or legal person.
For the purposes of this Law, a trademark shall also be a mark which has been granted international registration for the territory of the Republic of Serbia, based on the Madrid Agreement Concerning the International Registration of Trademarks (hereinafter referred to as: the Madrid Agreement), and/or the Protocol to the Madrid Agreement Concerning the International Registration of Trademarks (hereinafter referred to as: the Madrid Protocol.)
The provisions of this Law shall also apply to trademarks under paragraph 3 of this Article if certain issues are not regulated by the Madrid Arrangement and/or the Madrid Protocol.
Article 2
A trademark may be individual, collective, or warranty trademark.
A collective trademark shall mean a trademark of a legal person representing a certain type of association of manufactures and/or providers of services, which may be used by persons who are members of such association, under the conditions prescribed by this Law.
The user of a collective trademark shall be entitled to use such mark only in the manner laid down in the general act on collective trademarks.
A warranty trademark shall mean a trademark that is used by several companies under supervision of the trademark holder, as a warranty of quality, geographic origin, manner of manufacturing or other common characteristics of the goods and/or services provided by such companies.
The holder of the warranty trademark shall allow any company to use the warranty trademark for goods and/or services which have common characteristics prescribed by general act on the warranty trademark.
Article 3 Seals, stamps and hallmarks (official marks for marking precious metals, measurements and the like) shall not be deemed trademarks for the purposes of this Law.
II. SUBJECT - MATTER AND CONDITIONS FOR PROTECTION
Article 4 Any mark that is used to distinguish goods and/or services in trade and that may be graphically presented, shall be protected by the trademark.
A mark may be comprised, inter alia, of the following: words, slogans, letters, numbers, images, drawings, combinations of colors, three-dimensional shapes, combinations of such marks, as well as of graphically presentable musical notes.
1 Adopted on 11 December 2009, published on 16 December 2009 (Official Gazette of the Republic of Serbia No 104/09) entered into force on 24 December December 2009.
Article 5
A trademark shall not be used to protect a mark that:
1) is contrary to public policy or to accepted principles of morality;
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 indispensable 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 customary for designating a given type of goods and/or service;
6) is likely to cause confusion in trade due to its representation or content, and to mislead the relevant public with regard to the geographical origin, type, quality, or other features of the goods and/or services concerned;
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 goods and/or services;
9) is identical to an earlier protected mark of another person for a similar type of goods and/or services, or which is similar to an earlier protected mark of another person for an identical or similar type of goods and/or services, if such identicalness and/or similarity are likely to cause confusion in the relevant part of the public, including the likelihood of association of that mark with the earlier protected mark;
10) is identical or similar to a mark for identical or similar goods and/or services, which is well-known in Serbia and Montenegro 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 the commerce in Serbia and Montenegro as a mark of widespread reputation (hereinafter; "well-known trademark") used by other persons for marking their goods and/or services, if the use of such a mark would result in an unfair benefit from the reputation acquired by the well-known trademark or in harm to its distinctive character and/or reputation;
12) by its appearance or content, infringes copyright or industrial property rights;
13) comprises of 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;
14) represents or imitates a national or religious symbol.
A mark referred to in items 2, 4 and 5 of paragraph 1 of this Article may be protected as a trademark if the applicant for trademark registration proves that the serious use of such mark has rendered the mark capable of being distinguished in the trade in goods and/or services concerned.
A protected mark under paragraph 1 items 8), 9) and 11) of this Article shall be understood to mean a trademark for the territory of the Republic of Serbia, while a protected mark under paragraph 1 items 8) and 9) of this Article shall be understood to mean a mark which is the subject of a trademark application for the territory of the Republic of Serbia, provided the trademark applied for on the basis of that application is granted.
Where cases under paragraph 1 item 9) are concerned, a mark may be granted trademark protection based on an explicit written approval by the holder of the earlier registered trademark.
In establishing whether the mark under paragraph 1 item 10) of this Article is a well-known mark and/or whether the mark under paragraph 1 item 11) of this Article is a famous trademark, the familiarity of the relevant part of the public with the mark shall be taken into account, including their familiarity with the mark as a consequence of promotional activities in respect of the mark. The relevant part of the public shall be understood to mean the actual and the potential users of the goods and/or services designated by the mark, as well as the persons involved in the process of distribution of the respective goods and/or services.
The likeness or name of a person shall be protected as a trademark only with such person’s consent.
The likeness or name of a deceased person shall be protected as a trademark only with consent of parents, spouse and children of the deceased person.
The likeness or name of a historical person or other deceased famous person shall be protected as a trademark only with the authorization of the competent authority and the consent of such person’s relatives up to the third degree of kinship.
Article 6
Foreign natural and legal persons in Serbia and Montenegro shall enjoy the same rights with respect to the trademark protection as domestic natural and legal persons if such rights derive from international agreements or from the principle of reciprocity. The person claiming reciprocity shall have to prove its existence.
III. PROTECTION PROCEDURE
Common Provisions
Article 7
Legal protection of marks used in trade of goods and/or services shall be acquired by means of an administrative proceedings conducted by the administrative authority responsible for intellectual property matters (hereinafter referred to as "competent authority").
An appeal may be filed with the Government against the decisions rendered by the competent authority under paragraph 1 of this Article, within a term of 15 days from the receipt of the decision.
Administrative proceedings may be instituted against the decision on the appeal rendered by the Government within a term of 30 days from the date of the receipt of the Government’s decision.
Article 8
The competent authority shall maintain the Register of Applications for Trademark Registration (hereinafter referred to as "the Register of Applications") and the Register of Trademarks.
The Register of Applications shall include, in particular: the application number and the application filing date; data about the applicant; a representation of the mark and a designation of the goods and services the mark refers to; data about any changes referring to the trademark application (assignment, licence, pledge, franchise, etc.)
The Register of Trademarks shall include, in particular: the trademark registration number and the date of entering of the trademark in the Register of Trademarks; data about the trademark holder; a representation of the protected mark and a designation of the goods and services the mark refers to; data about any changes referring to the registered trademark (assignment, licence, pledge, franchise, etc.)
The content of registers referred to in paragraph 1 of this Article shall be prescribed by special regulation. .
Article 9. The Registers referred to in article 8 of this Law shall be open to the public and any interested person may have access to them. Any interested person, upon the oral request, may inspect the files of registered trademarks, in the presence of an official.
Upon the written request of an interested person and subject to payment of the prescribed fee, the competent authority shall make available the copies of the documents and the corresponding attestations and certificates with respect to facts contained in the official records kept by the authority.
Article 10
Foreign natural and legal persons shall be represented in the proceedings before the competent authority by a professional representative registered in the Register of Representatives maintained by the competent authority, or a domestic attorney.
Natural and legal persons who meet the requirements set by the Law regulating patent protection shall be entered into the Register of Representatives maintained by the competent authority.
Article 11 A representative who conducts activities in representing persons in exercising their rights under this Law shall be a Faculty of Law graduate.
Initiation of the Proceedings for Trademark Registration
Article 12
The procedure for the trademark registration shall be initiated by filing an application for trademark registration (hereinafter referred to as "the application").
The essential elements of the application shall be:
1) the request for the trademark registration;
2) the mark for which protection is requested;
3) the list of goods and/or services to which the mark relates.
An application may contain a request for registration of a single trademark relating to one or more types of goods and/or services.
The request for the trademark registration shall include in particular: the particulars of the applicant; a statement to the effect that the mark is an individual mark, collective mark or warranty mark; a representation of the mark; indication of classes of in which the goods and/or services are classified according to the Nice Agreement Concerning the International Classification of Goods And Services for the Purposes of the Registration of Marks (hereinafter: International Classification of goods and services); the signature and the stamp of the applicant.
If the mark referred to in paragraph 2. point 2) of this Article includes a figurative element, the depiction of such element shall be clear, made on a good quality paper and suitable for reproduction.
The goods and/or services referred to in paragraph 2, point 3) of this Article shall be marked and classified in accordance with the classes of the International Classification of goods and services.
The content of the request for the trademark registration registers referred to in paragraph 2, item 1) of this Article, as well as the content of any annexes that may be submitted with the application, shall be prescribed by the special regulation.
Application for Registration of a Collective and Warranty Trademarks
Article 13
An application for registration of a collective trademark shall, in addition to the elements referred to in Article 12 of this Law, be accompanied with the general act on collective trademark, whereas the application for the registration of a warranty trademark shall be accompanied with the general act on warranty trademark.
The general act on collective trademark shall contain: the particulars of the applicant or its representative; the provisions relating to the appearance of the mark and to the goods and/or services to which it relates; the provisions identifying the holders of the right to use the collective trademark and setting out the conditions for such use; the provisions on the rights and obligations of users of the collective trademark in the event of infringement of the trademark and the provisions setting out measures and consequences in case of violation of the provisions of the general act.
The general act on warranty trademark shall contain, besides the provisions referred to in paragraph 2 of this Article, provisions on common characteristics of goods and/or services guaranteed by the warranty trademark and provisions on the supervision of use of the warranty trademark by its holder.
The applicant, and/or the holder of the collective trademark and/or the warranty trademark shall submit to the competent authority any change of the provisions of the general act on collective trademark or warranty trademark.
Any person may examine the general act on collective trademark and/or the warranty trademark.
Article 14
In the administrative proceedings before the competent authority, fees and costs of proceedings shall be paid in accordance with special regulation on administrative fees and costs of proceedings, as well as the fees for the provision of information services.
Register of Applications Article 15 The data on the essential elements of the application referred to in Articles 12 and 13 of this Law, and other prescribed data, shall be entered into the Register of Applications.
Filing Date of an Application
Article 16
In order for the filing date of an application to be recognized, the application submitted to the competent authority on such date shall contain:
1) Indication that the trademark registration is requested;
2) First name and the last name, or the company name and the address of the applicant;
3) Mark for which protection is requested;
4) List of goods and/or services to which the mark relates.
Upon the receipt of the application the competent authority shall examine whether the conditions referred to in paragraph 1 of this Article have been met.
The note of a filing number, date and the time of the receipt shall be made by the competent authority on an application submitted, which contains elements referred to in paragraph 1 of this Article, and the certificate to that effect shall be issued to the applicant.
Where the application does not contain elements referred to in paragraph 1 of this Article, the competent authority shall request the applicant to correct the deficiencies because of which it has not been possible to enter the application into the appropriate register within a period of 30 days.
If the applicant does not correct deficiencies within the period referred to in paragraph 4 of this Article, the competent authority shall, by an individual decision, reject the application.
The decision under paragraph 5 of this Article may be appealed.
If the applicant corrects deficiencies within the period referred to in paragraph 4 of this Article, the competent authority shall, by an individual decision, recognize the date when the motion correcting deficiencies was received as the filing date of the application.
The application for which the filing date has been recognized shall be entered in the appropriate register of applications.
Priority Right
Article 17
As of the filing date the applicant shall enjoy a priority right over all other persons who have subsequently filed an application for the same mark or for a similar mark concerning the same or similar product and/or service.
Article 18
Any legal or natural person who has filed an orderly trademark application effective in any country member of the Paris Union or the World Trade Organization shall be granted a right of priority in the Republic of Serbia as of the filing date of the original application, provided that an application for the same mark is filed in the Republic of Serbia within six months from the effective date of the application in the concerned country. The filing date of the original application, the number of the application and the country where it has been filed shall be specified arising from the application for trademark registration.
An orderly application referred to in paragraph 1 of this Article shall be deemed to be any application that meets all the necessary requirements prescribed by the law of any Paris Union or World Trade Organization member-country in which the application was filed or by an international agreement signed between these countries, regardless of the subsequent legal effect of such application.
Any legal or natural person referred to in paragraph 1 of this Article shall submit to the competent authority a copy of the application duly certified by a competent authority of the Paris Union, the World Trade Organization member-country or the international organization to which the application has been filed, within three months from the filing date of the application in the Republic of Serbia.
The request for issuing a priority certificate shall include in particular: data about the applicant, a representation of the mark; a list of the goods and/or services; proof of payment of the fee for the certificate.
The priority certificate shall include, in particular: data about the applicant; the application number; data about the application filing date; a representation of the mark and a list of the goods and/services.
The Government shall prescribe the particulars of the request under paragraph 4 of this Article and the content of the priority certificate under paragraph 5 of this Article.
Article 19
An applicant who, within three months preceding filing of the application, has used a mark, to mark a product and/or service in an exhibition or a fair of international character in the Republic of Serbia or in any other member-country of the Paris Union or the World Trade Organization, may request in his application to be granted the priority right as from the date of the first use of such mark.
The applicant referred to in paragraph 1 of this Article shall submit the application accompanied by an attestation by the competent body of the member-country of the Paris Union or the World Trade Organization, certifying that an exhibition and/or a fair was of an international character and also providing information on the nature of an exhibition or a fair, the place where it was held, opening and closing dates and the date of the first use of the mark for which protection is requested.
The attestation certifying that an exhibition or a fair held in the Republic of Serbia was of an officially recognized international character shall be issued by the Chamber of Commerce of the Republic of Serbia.
Article 20 Recognition of the priority right referred to in Article 19 shall not extend the time limits referred to in Article 18 of this Law.
Article 21
No substantial changes may subsequently be made to the application regarding the representation of the mark, nor may the list of goods and/or services be amended.
For the purposes of paragraph 1 of this Article, a substantial change of the mark shall be understood to mean any change altering the distinctive character of the mark.
The precision of the wording of the list of goods and/or services shall not be deemed amending the list.
Article 22
Applications shall be examined in the order determined by the dates of their filing.
In derogation from the provision of paragraph 1 of this Article, applications may be reviewed in a fast-track procedure:
1) in the event of judicial proceedings or if inspection surveillance or customs procedures have been initiated upon the request of the court or the competent market inspection authority and/or the customs authority:
2) if an application for the international trademark registration has been filed, and it is subject to the Madrid Agreement:
3) if a fast-track procedure has to be applied pursuant to other regulations.
In the case under paragraph 2 item 3) of this Article, a request shall be filed for examining the application in a fast-track procedure.
Formal Examination of the Application Article 23 An application shall be deemed orderly if it contains essential elements referred to in Articles 12 and 13 of this Law, proof of payment of the filing fee and any other prescribed data.
I. GENERAL PROVISIONS