New law on Trademarks
In January 2020, the National Assembly of the Republic of Serbia adopted the Law on Trademarks (“Official Gazette of the Republic of Serbia”, no. 6/2020), which entered into force on 1st February 2020.
The aim of the new law is to adapt to the solutions of other European countries, with a focus on enabling more accurate formulations and systematization of their implementation.
The Appearance of the Sign
A sign protected by the trademark may consist of: words, slogans, letters, numbers, images, drawings, color combinations, three-dimensional shapes, combinations of such signs, or sounds.
The novelty is that the sign no longer has to be represented graphically to be protected. This aligns the law with modern technology, allowing for moving pictures, multimedia trademarks, and sound trademarks.
The New Absolute Ground for Refusal
A new absolute ground for refusal of registration has been introduced: preventing unauthorized registration of geographical origins and protected names of plant varieties.
The trademark cannot protect a sign that consists of a valid mark of geographical origin in Serbia or the earlier protected name of a plant variety.
Opposing the Registration of a Trademark
One of the most important innovations is the introduction of an opposition system, replacing the ex officio examination of relative reasons for refusal.
The goal is to allow earlier rights holders to oppose registration if it threatens or violates their rights.
Grounds for opposition:
- Relative grounds (Article 6): e.g. the disputed trademark is identical to an earlier trademark for the same goods/services, or infringes copyright/industrial property rights.
- Special grounds (Article 7): a company can oppose registration of an identical/similar trademark if the goods/services overlap with those of the opponent.
The opposition may be submitted within three months of the application’s publication in the Gazette of Intellectual Property.
If the opposition is timely, proper, and valid, the application will be refused.
This system harmonizes domestic legislation with most European countries.
Abolishment of Appeal
A major novelty is the abolishment of appeal as a legal remedy against decisions of the Intellectual Property Office. Instead, parties may initiate administrative disputes before the Administrative Court.
The Holder of a License
The new law allows a license holder to file infringement actions:
- with the consent of the trademark holder, or
- if the license holder notifies the trademark holder of infringement and the latter fails to act within 30 days.
Exhaustion of Intellectual Property Rights
The law introduces international exhaustion, replacing the national exhaustion regime.
- Under the old system, parallel imports were restricted, and trademark holders could prohibit sales of goods bought abroad.
- Under the new system, once goods are placed on the market anywhere in the world by the trademark holder (or authorized parties), the holder cannot prohibit further use of the trademark for those goods.
This harmonizes Serbia with European systems and supports the free circulation of goods.
Bearing all of the above in mind, it remains to be seen what effects this modern law, aligned with European solutions, will have in practice.