A new trademark law entered into force in Serbia on February 1, 2020 introducing important changes that further harmonize the country’s trademark legislation with the corresponding European Union law. Here are the most important changes:
1. Introduction of the opposition system - One of the most important changes brought by the new trademark law is the introduction of the opposition system. Interested parties can file an opposition within three months from the application’s publication date in the Serbian IPO’s Official Gazette. The deadline for filing oppositions against international registrations is three months from the first day of the month following the date of publication in the WIPO Gazette of International Marks. Only if the two parties make a joint request to that effect, will the Serbian IPO approve a “cooling-off” period, which can last for 24 months at the longest.
2. Grounds For Opposition - Oppositions can be based on two new grounds for refusal which are not examined ex officio and were previously entirely absent from the law. One of these is filing of a trademark application by a trademark owner’s agent or representative without the owner’s authorization. The other is similarity of a trademark to an existing company name.
3. Adopting the principle of international exhaustion - The new Trademarks Act adopts the concept of international exhaustion. Therefore, once the trademark proprietor places, or consents to placing, on the market anywhere in the world goods protected by the trademark, the proprietor has exhausted its right to prohibit further circulation of the goods.
4. Infringement Actions In The Name Of Licensees - Unless otherwise stipulated by the license agreement, the holder of an exclusive license is entitled to file an infringement action if they notified the trademark owner and the latter did not file the infringement action within 30 days from being notified, and the holder of a non-exclusive licence is entitled to file an infringement action only if such an action is authorized by the trademark owner.
5. International Trademark Use - In opposition, infringement, invalidity and non-use cancellation proceedings, the relevant registration date for an international trademark will be one year after the date of notifying WIPO of the request to extend protection to the territory of Serbia.
6. Comparative advertising - Trademark proprietor may now claim trademark infringement if the defendant used the sign in comparative advertising in a manner that is contrary to law.
7. Right to prohibit preparatory acts in relation to the use of packaging or other means - Where the risk of infringement exists, the proprietor has the right to prohibit affixing a sign identical with, or similar to, the protected trademark on the packaging, labels, and other items on which a mark may be placed.
8. Restitutio in integrum -The new Trademark Act now allows for restitutio in integrum in a number of stages in the proceeding before the SIPO.
9. Decisions of the Serbian Intellectual Property Office are final - Once the SIPO takes a decision, the dissatisfied party no longer has the possibility of filing an appeal. However, administrative litigation can be initiated.
10. Trademarks as objects of enforcement -The law makes it explicit that trademarks are suitable as objects of enforcement.
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