Harmonization of the National Trademark Act With EU Directives

February 20, 2020

Harmonization of the National Trademark Act With EU Directives

February 20, 2020

Milan Samardžić

Milan Samardžić

Partner

Nemanja Providžalo

Nemanja Providžalo

Senior Associate

Starting from 1 February 2020, the long-awaited new Trademark Act (“Official Gazette of Republic of Serbia” no. 6/2020 “Act”) entered into force, bringing new highly anticipated changes to trademark regulation in Serbia, as well as harmonization of national legislation with the applicable directives of EU.

As the main reason for enacting a new law, the lawmaker cited the need to harmonize national trademark legislation with Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the Enforcement of Intellectual Property Rights and Directive 2015/2436/EU of the European Parliament and of the Council of 16 December 2015 to approximate the laws of Member States relating to trademarks, as well as the need to remedy the shortcomings of terminological nature from the previous trademark law with more precise formulations, which will enable a more efficient implementation of the Act.

Although the Act introduced a vast amount of amendments, for the purpose of this article we shall focus only on the select few which we consider most relevant.

 

  1. Right to Object (“prigovor”)

A key novelty introduced by the Act is the right to object during the procedure of registration of the trademark in front of the Intellectual Property Office (“IPO”).  For this to be effective, the procedure of registration of the trademark was amended as well as for what reasons the IPO could reject the registration of a sign as a trademark.

The Act divides reasons on which grounds registration of the sign as a trademark can be rejected into two groups: absolute and relative. As absolute reasons, the Act cites the same reasons which the previous Trademark Act defined as grounds on which the IPO could reject the registration of a trademark ex officio, with the same consequences stipulated by the Act. However, relative reasons are new and directed towards the protection of rights of the holder of an earlier trademark or a well-known trademark, licensee, or the holder of an earlier right to a name or image, copyright or industrial property right.

In the event that a registration application for a trademark is not rejected on the grounds of absolute reasons, the IPO shall publish the information about that trademark application within its official journal.  All interested persons must object within 3 months after the date of trademark application.

The Act also introduces the possibility that, during the objection procedure, both parties jointly submitted a request to pause the trademark registration process for 24 months for the purpose of amicable settlement of the dispute.

 

  1. Statute of Limitations for Trademark Infringement

The second most important novelty is the amendment concerning statute of limitations for claims against trademark infringement. The previous solution was rather restrictive as it was prescribing an objective deadline for filing the claim of 5 years from the date when infringement first occurred.

In practice, this led to inability of preventing infringement, as well as repetition of the infringement if a trademark proprietor was not familiar with the first action of the violation and more than 5 years has passed since then.

The Act has rectified this flaw by deleting the word “first” from the statute of limitations definitions, allowing the 5 years deadline to be counted starting from the last infringement.

 

  1. New Trademark Definition

Previous Trademark Act had a very restrictive trademark definition, prescribing that only what can be graphically displayed can be protected as a trademark. This has been changed with the adoption of the Act, which now enables registration of sound trademarks, trademarks consisting of moving pictures or multimedia trademarks. The only conditions are that the trademark is distinctive and that it can, in such form, be inserted into the Trademark Register within the IPO. The Act also stipulates two new signs which can be protected as a trademark: the shape of the product and its packaging.

 

  1. Introduction of Restitutio in Integrum

The Act introduces restitutio in integrum as a new concept in procedures before the IPO. It allows applicants who initially failed to comply with the Law within the prescribed time limit to remedy such failures within 3 months from the moment incompliance was noted.

 

  1. Decisions of the IPO are Final

Intention of the lawmaker was also to make the trademark registration process more effective, especially in the event that legal remedies during the procedure have been submitted against decisions of the IPO. For this purpose, the Act prescribes that decisions of the IPO are final, meaning that the dissatisfied party has no possibility to submit an appeal to the Government, but only to initiate administrative court proceedings. By eliminating the appeal process, the procedure of registration of the trademark in the event of an unfavourable decision of the IPO is shortened, but trademark applicants still have effective means of challenging such decisions.

 

  1. Exhaustion of Rights

According to the previous Trademark Act, the trademark proprietor had no rights to prohibit the use of the trademark in connection with the goods which he placed on the market first on the territory of the Republic of Serbia, by itself or through a person authorized by it, thus preventing so-called parallel import. This system allows the trademark holders, i.e. exclusive distributors, absolute control over the sale of goods on the domestic market, which distorted the free market competition and resulted in the same goods in Serbia being more expensive than on the markets of other countries.

This is the main reason why the Act replaces the system of national exhaustion with the system of worldwide exhaustion, which should prevent such practices in the future.

 

  1. Extension of the Trademark Registration Period

Validity of trademark rights remained the same as in the previous Trademark Act (10 years), however the Act also provides the following:

  • the request for extension of the validity of a trademark right in addition to the trademark proprietor may also be submitted by a person authorized by law or contract;
  • the IPO is obliged to notify the trademark proprietor about the expiry of registration 6 months in advance, and
  • the possibility of partial renewal of a trademark.

 

  1. Right to Prohibit Preparatory Acts in Relation to Use of Packaging or Other Means

The Act now provides for a right of the trademark proprietor to prohibit other persons from infringing the trademark with preparatory actions involving the use of the trademark; for example, to prevent the sign use on packaging, stickers, labels or other means which is identical or similar to their trademark.

 

  1. Enforcement on Trademark Rights

The amendments of the Enforcement and Security Act introduced enforcement of trademark rights. However, the previous Trademark Act did not contain suitable provisions in this regard. The Act now distinctively provides for a possibility of enforcement against trademark rights as well as registration of existence of such enforcement proceedings in the trademark register held with the IPO.

 

This text is for informational purposes only and should not be considered legal advice. Should you require any additional information, feel free to contact us.

Contact:

Milan Samardžić , Partner
milan.samardzic@sog.rs

Nemanja Providžalo, Senior Associate
nemanja.providzalo@sog.rs

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