New Serbian Trademarks Act Enters into Force
On the 1 February 2020 the new Serbian Trademarks Act entered into force with one of the aims to harmonize national law with the applicable directives of EU. The Act brought numerous changes to the Serbian trademark legislation out of which we shall cover the most significant ones.
Introduction of the Opposition System
One of the crucial novelties introduced in the new Trademarks Act is the institute of “opposition”. As the previous Trademarks Act stipulated, the Intellectual Property Office of the Republic of Serbia (IPO) performs an official examination of grounds for refusal of trademark applications. However, the grounds for refusal are now divided into two groups: absolute and relative with more precise formulations.
If the application successfully passes the examination on absolute and relative grounds, it will be published in the Serbian IPO’s Official Gazette. However, proprietor of an earlier right may file an opposition based on relative grounds for refusal within three months from the publication of the application.
Additionally, opposition procedure may be suspended if both parties jointly submit a request to pause the trademark registration process for 24 months for the purpose of amicable settlement of the dispute.
IPO Decisions are Final
In order to make the trademark registration procedure more effective, the new Trademarks Act stipulates that IPO decisions are final; therefore, the dissatisfied party may no longer submit an appeal to the the Government. However, the possibility of initiating administrative court proceedings remains, which results in shortening of the procedure in case the IPO passes an unfavourable decision, but still provides the dissatisfied party the possibility of challenging such decisions effectively.
New Trademark Definition
The new Trademarks Act moves from a restrictive trademark definition where only what could be graphically displayed could have been protected as a trademark, to a wider possibility by enabling registration of sound trademarks, trademarks consisting of moving pictures or multimedia trademarks, the shape of the product and its packaging provided that the trademark is distinctive and that it can be shown in the trademark register.
Restitutio in Integrum
The new Trademarks Act also introduces restitutio in integrum in several stages of the trademark registration procedure before the IPO. Therefore, applicants that initially failed to comply with the prescribed time limit will have an opportunity to exercise their rights if they submit a motion for restitutio in integrum within 3 months from the moment incompliance was noticed.
Enforcement on Trademark Rights
The new Act explicitly stipulates that trademarks are suitable objects of enforcement and provides the possibility of such enforcement proceedings to be registered in the trademark register before the IPO.
Exhaustion of Rights (Parallel Imports)
While the previous Trademarks Act adopted a national exhaustion system, the new Trademarks Act adopts the concept of international exhaustion. According to the previous national exhaustion system, the trademark proprietor had no right to prohibit others to use such trademark in connection with goods which were placed on the market first on the national territory – territory of the Republic of Serbia, thus preventing so-called parallel import. This system allowed the trademark holders, i.e. exclusive distributors, absolute control over the sale of goods on the domestic market.
Contrary to the previous Trademarks Act, now once the trademark proprietor places the goods protected by the trademark on the market anywhere in the world, the proprietor has exhausted its right to prohibit further circulation of the goods and therefore it cannot prohibit others from reselling the products legally put into circulation anywhere in the world.
Licensee’s Right to Sue
Licensee’s right to file a claim for trademark infringement is now restricted, since the licensee may no longer sue without the trademark proprietor’s consent. Exceptionally, licensee in an exclusive trademark license agreement may sue the infringer if the trademark proprietor fails to take any action within 30 days after the licensee gave formal notice on infringement.