Trade and Service Marks

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 27, 1992.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 27, 1992.
– Madrid Agreement Concerning the International Registration of Marks, Stockholm Act, since April 27, 1992.
– Nice Agreement Concerning the International Classification of Goods and Services, Stockholm Act, since April 27, 1992, and Geneva Act, since December 17, 2010.
– Protocol Relating to the Madrid Agreement, since February 17, 1998.
– Trademark Law Treaty, since September 15, 1998.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act, since June 1, 1999.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Stockholm Act, since May 18, 2000.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since October 15, 2009.
– Singapore Treaty on the Law of Trademarks, since November 19, 2010.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.

Filing

Applicant: individuals or legal entities.

Foreigners and nationals not living in the country: must have a local attorney.

Trademarks of foreigners: the same rights as nationals in accordance with conventions or agreements, or on the basis of reciprocity.

Kinds of protection: individual and collective trademarks.

Marks for services: protection is provided for.

Novelty: examination of identity and similarity.

Registrability: a trademark is granted to any sign, particularly words, including personal names, letters, numbers, pictures, drawings, colors, three-dimensional marks, combinations of these marks as well as musical phrases, provided that it is capable of distinguishing in the course of trade the goods or services of one natural or legal person from the goods and/or services of another natural or legal person, and that it can be represented in the Trademark Register in a manner that enables clear and precise determination of the subject matter of protection. 

Not registrable: marks which are contrary to public order or morality; marks which in their overall appearance are not capable of distinguishing goods and services in economic circulation; marks which consist exclusively of a shape which results from the nature of goods, or of a shape of goods which is necessary to obtain a technical result, or of a shape which gives substantial value to goods; marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of rendering of service, or other characteristics of goods or services; marks which are customary in current language or established practices of trade for designation of certain kinds of goods or services; marks which by their form or content, are capable of deceiving participants in trade in respect of the kind, quality or geographical origin or other properties of goods or services; marks which contain or imitate official signs for control or guarantee of quality, except with an approval of the competent authority; marks which are identical to trademarks registered earlier for the same goods or services; marks which are confusingly similar to trademarks of another party registered earlier for the same or similar goods or services; marks which are identical or confusingly similar to well-known marks protected for the same or similar goods/services in terms of Article 6bis of the Paris Convention; famous marks of third parties or their imitations, translations or transliterations, regardless of the goods and services for which they are registered if the use of such trademark would take unfair advantage of or be detrimental to the distinctive character or reputation of the mark; marks which infringe copyright or industrial property rights; marks which contain the name, abbreviation or imitation of the name of the State or international organization, as well as marks which contain the State flag or emblem, except with the approval of the competent authority of that country or organization; marks which represent or imitate national and religious symbols. The name or image of a person can be protected only with the consent of that person.

Association (collective) marks: registrable.

Certification marks: registrable.

Priorities: in general, from the filing date of the trademark application; union priority: six months, must be claimed in the application; exhibition priority: three months, must be claimed in the application.

Classification: international.

Territory covered: Serbia.

Filing requirements for an application (to be sent to resident agent):
1. 3 prints (except for word marks), size: min. length 1.5 cm, max. size 8 x 8 cm;
2. List of goods and services, grouped according to the International Classification;
3. Priority Certificate, if any;
4. Power of attorney, not legalized (can be filed subsequently).

Electronic filing: possible (reduced filing fee). 

Electronic signatures: are accepted provided that they are certified by a Certification Service Provider listed on the eIDAS Trusted List (https://webgate.ec.europa.eu/tl-browser/#/).

Examination Procedure

Examination: (1) formal examination: as to completeness and formal requirements and (2) examination of suitability (absolute and relative grounds)

Disclaimers: available.

Letters of consent: accepted unless trademarks and goods or services are identical.

Opposition: possible as of February 1, 2020. After the trademark is examined on absolute and relative grounds, it is published in the Official Gazette for opposition purposes. Interested persons may oppose the trademark within three months from publication. Once a notice of opposition has been filed, it is forwarded to the applicant for response within sixty days of receipt. 

Registration: after having established that the mark fulfills the conditions for trademark protection and provided that the trademark is not (successfully) opposed, the IP Office asks the applicant to pay the fee for the first ten years of trademark protection, the issue fee and the publication costs. Upon the payment, the IP Office registers the trademark, publishes the same in the Official Journal and issues the Certificate of Registration.

Amendment of application: it is not possible to make a substantial modification to the mark, or to add goods or services to the list (it is considered that the modification to the mark is substantial if it alters the distinctive character of the mark).

Division of application: possible.

Urgent procedure: provided for (1) in cases of trademark infringement, at the request of the court or inspection or customs authorities; (2) in cases where other laws require urgent registration. 

Restoration: possible by reinstatement to the former condition, the request has to be filed within three months from the receipt of the decision.

Appeals: the decision of the IP Office can be challenged in an administrative lawsuit with the Administrative Court (within thirty days from the receipt of the decision).

Granting

Delivery of document: usually eight to ten months after filing.

Beginning of protection: from date of filing the application.

Duration: the term of a trademark is ten years from the filing date of the trademark application.

Renewals: every ten years. A trademark can be renewed an unlimited number of times. For trademarks registered up to July 27, 1990 (registration number lower than 34756) the ten-year renewal periods are calculated from the registration date.

Latest term for renewal: before expiry of the term for which the fees have been paid.

Term of grace for renewal: six months, with 50% fine.

Owner’s rights: exclusive right to use the registered trademark and to prohibit unauthorized use by a third party, except if the trademark is a third party’s company name obtained in good faith before the priority date of the trademark, or it is a personal name or address, indication of the kind, quality, quantity, intended purpose, value, geographical origin, the time of production or other characteristics of goods or services, or a mark the use of which is necessary to indicate the purpose of the product.

Trademark exhaustion: international.

Obligation to use: the holder of the trademark has to use it. If he does not use it without justified reason, in an uninterrupted period of five years from the registration date or from the date of last use, the trademark can be cancelled at the request of an interested person. Use in a form which does not alter the distinctive character of the mark and use on goods solely for export, constitute trademark use. The use in advertising of goods/services covered by the trademark satisfies the use requirement only if the goods can be purchased.

Marking of registered goods: optional.

Text of marking: not provided for.

Modification of the mark after registration: not possible.

Changes in the list of goods: possible, only if the list is restricted.

Corrections: possible to correct typographical errors.

Licenses: provided for trademarks and trademark applications; can be exclusive or not exclusive; contract must be in a written form and registered to take effect vis-à-vis third parties.

Assignment: provided for trademarks and trademark applications; contract must be in a written form and registered to take effect vis-à-vis third parties.

Modification of Protection after Registration

Rights of prior user: a prior user has the right to request the court to declare him the holder of a pending application/registered trademark, filed/registered in the name of a third party, provided that this mark was a well-known designation of his goods or services before the third party applied for registration of the same mark covering the same or similar goods or services. The lawsuit cannot be filed after a period of five years from the registration of the trademark.

Compulsory license: not provided for.

Expropriation: not provided for.

Invalidation: a trademark can be invalidated if it is established that the conditions for granting the trademark were not fulfilled at the time protection was granted. The request can be filed with the IP Office during the whole period of trademark duration. The only exception is made for the owner of an earlier trademark or earlier IP right, which cannot act against a later trademark, if he has not challenged its use in the five years preceding the invalidation request and if there has been no bad faith on the part of the owner of a later trademark (acquiescence). Invalidation request will be refused if - at the request of the owner of the challenged trademark - the owner of the earlier trademark does not provide evidence of use of his trademark in the five years preceding the invalidation request, unless the owner of the later trademark acted in bad faith. 

Cancellation: third parties can request cancellation of the trademark that was not used, that became a generic term, that became confusing with respect to the origin, kind, quality or other characteristics of goods/services, or that became contrary to morality and/or public order.

Validation of lapsed marks: not provided for.

Infringement and penalties: the court can be requested to render a judgment whereby it would establish that the trademark has been infringed, prohibit the activities which constitute infringement or present a serious threat to infringement, order the seizure and/or destruction or alteration of the infringing goods and/or equipment for production of infringing goods, to grant indemnification, to order the publication of the judgment at the expense of the infringer, and to order the infringer to provide information about third parties which were involved in infringing activities. Instead of indemnification, where applicable, the court may grant a lump sum compensation in the amount not lower than the one that would be received for the specific use of the trademark, if such use was in accordance with the law. The lawsuit has to be filed within a period of three years from the date the plaintiff learned about the infringement and the identity of the infringer, but not later than five years from the date of infringement (in case of continuous infringement, from the date of the last infringement). Preliminary injunctions and measures to secure evidence are provided for (can be requested in a lawsuit, exceptionally even earlier, but the lawsuit must be filed within thirty days from the date of the decision granting the injunctions/securing of evidence). The court is obliged to grant a preliminary injunction in cases where the infringing mark is identical. Fines may be imposed both on a company and company officials. Imprisonment provided for in the Criminal Code.