04-01-2011 (Newsletter Issue 6/11)
Law on Industrial Property Amended
The Parliament of the Republic of Macedonia ratified amendments to the Law on Industrial Property, which came into force on March 5th, 2011.
The primary reason for amending the Law on Industrial Property is that, as of recently, the Law on Quality of Agricultural Products regulates Protected Designations of Origin (PDO) and Protected Geographical Indication (PGI) for agricultural and dairy products. Thus, the provisions for protection of such products had to be removed from the Law on Industrial Property; other products with PDO and PGI remain under the scope of the Law on Industrial Property.
Another significant change concerns the State Market Inspectorate’s enforcement activities. The Law on Industrial Property now obligates the State Market inspectors to temporarily detain counterfeit goods placed on the market, while the old law did not clearly specify what was to be done with the counterfeits on the market. Instead of detaining the goods, the inspectors often issued orders for these goods to be removed from the market, but the goods were not destroyed and their fate was unknown.
The amendments introduce the possibility of out-of-court settlement.
Source: PETOŠEVIĆ, Macedonia
03-15-2011 (Newsletter Issue 5/11)
Translation of Nice Classification (9th)
The Macedonian State Office of Industrial Property (IPO) has published the official Macedonian translation of the Ninth Edition of the International Classification of Goods and Services under the Nice Agreement.
The Macedonian translation is available in print at the Macedonian IPO and in the PDF format on the IPO website.
Source: PETOŠEVIĆ, Macedonia
08-01-2010 (Newsletter Issue 13/10)
Lisbon Agreement Ratified
The Macedonian Assembly ratified the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration at its session on May 31st, 2010.
The agreement will enter into force three months after the date on which the WIPO Director General is notified of the ratification.
04-14-2010 (Newsletter Issue 9/10)Accession to the Vienna AgreementThe Republic of Macedonia ratified the Vienna Agreement on the International Classification of the Figurative Elements of Trademarks.
The said Agreement will enter into force, with respect to the former Yugoslav Republic of Macedonia, on May 26, 2010.
12-15-2009 (Newsletter Issue 5/09)
State Office of Industrial Property Publishes New Fees
On October 30, the State Office of Industrial Property of the Republic of Macedonia published new fees.
The changes to the fees are minor. All service fees remain the same. The only change is that unemployed individuals, students, retirees, and disabled persons do not have to pay for searches of the Patent Database. Also, all physical persons that apply for a patent in the area of ecology or protection of the environment can search the Patent Database for free.
In addition, if the patent application is submitted electronically, the granting and printing fees are reduced by 30 percent.
The Macedonian Government approved the fees on September 22, 2009.
Legal basis is the Industrial Property Law of 17.02.2009 (as third regulation), entered into force on 25.02.2009. - “Official Journal of R.Macedonia”No. 21.
Macedonia is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Trademarks which were protected in former Yugoslavia are protected in Macedonia only if they were re-registered within the period stipulated.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, holograms, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The application is filed at State Office of Industrial Property (SOIP).
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination of distinctiveness, but no search for prior trademarks.
The processing time from first filing to first office action is approx. 6 to 12 months.
The processing time from first filing to registration is approx. 6 to 18 months
After registration, the trademark is published in the Gazette “Glasnik”.
Since January 1st, 2004, there is an opposition procedure. The time limit for filing an opposition at the SOIP is 90 days after the publication of the application in the official gazette of the SOIP (Industrial Property Gazette).
There is no possibility for extension of the time limit for filing opposition. If no opposition is filed, the application will be granted.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
90 days from the 1st of the month following publication in the WIPO Gazette
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
If the trademark has not been used within 5 years from registration, it may be subject to cancellation.
The official fee for filing is approx. EUR 10.00 for up to three classes and approx. EUR 2.00 for each additional class.
The fee for 10 years protection is approx. EUR 65.00 for up to three classes and approx. EUR 16.00 for each addtional class.
The fee for issuance of the registration certificate is approx. EUR 6.00 and publication fee of the grant is approx. EUR 6.00 for up to three classes and approx. EUR 3.00 for each addtional class.
Trademark Licence Agreement
In Macedonia licences have to be granted in writing. It is permitted to license the use of unregistered marks. A proprietor may not register a user in respect of only some of the goods or service in respect of which the mark is registered. If the licence is recorded in the Register of the State Office of Industrial Property (SOIP), the trademark may not be sold without permission of the licensee.
1. If the licence agreement provides for manufacturing of certain products, the licensee is obliged to provide quality standards
2. If the licence agreement provides for manufacturing of certain products, the licensee is obliged to mark each product as “made under licence” as well as indicating the name of the licensor
3. If the licence agreement provides for manufacturing of certain products, each of the products produced by the licensee must contain an indication of the trademark subject of the licence agreement
There are statutory provisions for the recordal of a licensee with the Trademark Office. However, the provisions regarding the recordal of a licence agreement are voluntary i.e. It is up to the contracting parties to decide whether the agreement will be entered on the Trademark Register. There is no time frame for a recordal.
The following documents are required for the recordal of a licensee:
1. An original licence agreement or a certified copy
2. An original of power of attorney, simply signed by the licensor or by the licensee
The licence becomes effective and enforceable against third parties upon recordal in the Register. After the recordal, publication is required in the Official Gazette of the SOIP. The Macedonian SOIP publishes six Gazettes during the year and the publication of the licence agreement is effected in the first Gazette after its recordal in the Register.
There is an evidentiary presumption that use by a recorded licensee is permitted use. A licensee may join the proprietor in infringement proceedings, however this is not obligatory. He can also call upon the owner to institute infringement proceedings. The registered user may only institute proceedings himself if so provided for by the licence agreement. He must cite the owner as co-defendant in any such proceedings.
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