12-04-2012 (Newsletter Issue 18/12)
Accession to Nice Agreement
On November 16, 2012, Montenegro deposited its instrument of accession to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as revised in Stockholm on July 14, 1967, and in Geneva on May 13, 1977, and amended on September 28, 1979.
The Geneva Act of the Nice Agreement as amended will enter into force in Montenegro on February 16, 2013.
Source: Source: Petosevic, Montenegro and www.wipo.int
09-02-2012 (Newsletter Issue 13/12)Amendments to Trademark LawThe Law on amendments of the Trademark Law in Montenegro entered into force on August 17, 2012. Namely, the referenced Law on amendments of the Trademark Law in Montenegro was published in the Official Gazette of Montenegro No. 44/12 on August 9, 2012.
The Law on amendments clarifies the procedure for filing national and international trademark applications. Namely, after filing new trademark application, the IPO of Montenegro examines the formal requirements of the same. If the formal requirements are not fulfilled, the IPO of Montenegro invites the applicant to submit the missing documents. The deadline for submission of the necessary documents is 30 days as from the receipt of the invitation (this term is not extendable). In case the Applicant meets the deadline of 30 days and the missing documents are submitted, the filing date of the trademark application will be the date of fulfilling the formal requirements. In case the applicant does not fulfill requirements within the deadline of 30 days, the application will be rejected.
According to the provisions of the Trademark Law, the renewal fees paid in a grace period (six months after the renewal due date) had to be paid with fine 100%. However, according to the amendments of the Trademark Law, the renewal fees paid in the grace period have to be paid with fine of 50%.
The Trademark Law is amended with the provisions regulating the opposition against International Registrations. The deadline for filing the opposition (90 days) is to be counted as from the first day of the month following the month of publication of the WIPO Official Gazette in which the International Registration is published. In case the International Registration is preliminary refused based on filed opposition, the IPO of Montenegro will invite the applicant to name the representative. The deadline to name the representative is 4 months as from the receipt of the referenced official invitation. The deadline to respond to an opposition is 60 days as from the receipt of the opposition by the named representative.
Source: Zivko Mijatovic & Partners, Montenegro
02-07-2012 (Newsletter Issue 2/12)Accession to Vienna AgreementThe Government of Montenegro deposited its instrument of accession to the Vienna Agreement establishing an International Classification of the Figurative Elements of Marks on December 9, 2011.
The said Agreement will enter into force on March 9, 2012.
For more information, please click here.
01-23-2012 (Newsletter Issue 1/12)
TMs Published for Opposition
The Montenegro Intellectual Property Office (IPO) issued its seventh Official Gazette on December 20, 2011. It is the first one that includes national trademark applications published for opposition, under the provisions of the new trademark law of December 2010.
The new trademark law abolished the previous practice of substantive examination on relative grounds and introduced the opposition proceedings. A trademark application is now examined on absolute grounds only and if it meets the requirements for registration, it is published in the Official Gazette. Third parties have 90 days from the date of publication to file a written opposition.
Source: Petosevic, Montenegro and
Intellectual Property Office of Montenegro
12-01-2011 (Newsletter Issue 14/11)
Serbian Trademarks Included in Search Reports
The search reports provided by Intellectual Property Office of Montenegro (IPO) include Serbian trademarks registered before the IPO of Serbia prior to May 28, 2008. Therefore, no additional search needs to be conducted before the Serbian IPO.
However, the report includes Serbian trademarks that may not be re-registered or filed for re-registration in Montenegro. No further information is provided by the Montenegrin IPO as to the status of those marks in Montenegro. Therefore, whereas some of those marks may be real obstacles if they were filed for re-registration in Montenegro, others may not become such an obstacle if their owners do not file for re-registration in Montenegro before December 16, 2011. The situation will be clear by the end of re-registration period.
Source: PETOSEVIC, Podgorica, Montenegro
11-08-2011 (Newsletter Issue 13/11)
New Trademark Regulation Enters into Force
A new regulation governing trademark application and registration procedures came into force in Montenegro on October 29, 2011. The new regulation replaced the former 2004 regulation, rendered in the former State Union of Serbia and Montenegro.
The new regulation determines the content of and the manner of running the trademark register and applications records. The regulation also prescribes the necessary content for all types of requests and decisions that may be rendered in connection with a trademark application and registration.
Source: PETOSEVIC Montenegro
10-01-2011 (Newsletter Issue 11/11)
Deadline to Re-register National Serbian Trademark
We would like to remind you, that the final deadline for re-registration of national Serbian trademarks in Montenegro is December 16, 2011. In the event that a re-registration request is not filed, the national Serbian trademark registration will no longer enjoy protection in Montenegro.
This re-registration process applies to national Serbian trademarks only; International Registrations designating Serbia cannot be re-registered in Montenegro.
Source: Producta Ltd., Zagreb, Croatia
08-10-2011 (Newsletter Issue 10/11)Trademark Searches PossibleThe Intellectual Property Office of Montenegro (IPO) informed that the Trademark Database of Montenegro became available for conducting trademark searches. It is possible to file requests before the IPO of Montenegro for conducting the official searches through national Trademark database.
At this moment, the Trademark Database of Montenegro covers only those trademarks registered or applied for before the IPO of Montenegro. As the process of revalidation of Serbian trademark registrations in Montenegro has not yet been finished, the trademark searches do not cover the Serbian trademark registrations yet. Once the revalidation process is finished (deadline is December 16th, 2011), Montenegrian Trademark Database will be completed. Until then, it is recommended to conduct simultaneous searches in both Montenegro and Serbia to guarantee completeness of the results.
Source: Zivko Mijatovic, Montenegro
01-01-2011 (Newsletter Issue 1/11)
Procedure for Validation of Serbian Trademarks
The new Trademark Law in Montenegro entered into force on December 16th, 2010. According to the provisions of the new Trademark Law, national Trademarks registered before the IPO of Serbia prior to May 28, 2008 (date of opening of the Montenegrin IPO) have to be validated before the IPO of Montenegro.
It will be necessary to provide proof of registration of Serbian National Trademarks and to file a claim for entry into the Trademark register of Montenegro.
Please find below details of the procedure for entrance of Serbian Trademark Registrations into the Trademark Register of Montenegro:
- Obtaining of the Serbian Validity Certificate and forwarding of the same to Montenegro
- Submission of the Serbian Validity Certificate, filing a claim for entry into the Trademark Register of Montenegro and payment of fees for publication in the Intellectual Property Gazette of Montenegro
- Publication of the Trademark in the Intellectual Property Gazette of Montenegro and issuance of the Decision on entrance into the Trademark register of Montenegro
All the rights of the Serbian national trademarks which comply with the above requirement will preserve the same priority and renewal date as in Serbia.
The deadline for complying with the above mentioned procedure is 1 year from the date of entering into force of the new Law – December 16th, 2011. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
The above requirement is not deemed necessary for any Montenegro mark based on a Serbian national trademark for which an action has already been taken directly before the Montenegro IPO prior to December 16th, 2010 (such as renewal, assignment, change of name, etc.).
12-01-2010 (Newsletter Issue 17/10)
New Trademark Law/New Opposition Period
The Parliament of Montenegro has passed a new Trademark Law on November 30th, 2010. The law will enter into force on December 16th.
The main novelties which have been introduced in the new Law:
- proof of registration for Serbian national trademarks now required
- no examination on relative grounds during application procedure
- introduction of opposition procedure (opposition period is 3 months from publication of application)
The proof of registration of Serbian National Trademarks is now required for trademarks in Montenegro based on a Serbian national trademark unless an action has already been taken for the respective trademark before the Montenegro IPO (such as renewal, assignment, change of name, etc.).
The deadline for complying with this procedure will be 1 year from publication of the new Law in the Official Gazette of Montenegro. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
As from the enactment of the new Law, the Office will examine only absolute grounds for refusal, while the relative grounds will become subject to opposition proceedings. Any trademark application in Montenegro (excluding trademarks registered in Serbia and Montenegro prior to 28 May 2008) will be published and there will be a period of 3 months as from the publication date, during which time an opposition may be filed. This term is not extendible.
Deadline Extended for Montenegro Domain .ME
The period of transition from the current CG.YU domain to the new .ME domain has been extended from September 30, 2009 to March 30, 2010, based on the decision of the International Corporation for Assigned Names and Numbers (ICANN). If current CG.YU domain users do not switch to .ME before the deadline, they will not be able to access their emails and web servers.
03-08-2010 (Newsletter Issue 8/10)Launch of IP GazetteThe Montenegrin IPO launched its first IP Gazette on 10 February 2010.
The Gazette is available on the Montenegrin IPO website click here
It will be issued three times a year.
The Trademark Law entered into force on December 16, 2010, amendments became effective on August 17, 2012. According to the provisions of the new Trademark Law, national Trademarks registered before the IPO of Serbia prior to 28 May 2008 (date of opening of the Montenegrin IPO) have to be validated before the IPO of Montenegro. Contrary to the previously established practice, it is necessary to provide proof of registration of Serbian National Trademarks and to file a claim for entrance into the Trademark register of Montenegro. This requirement consists in acquiring a validity certificate from the Serbian Trademark Office and filing this validity certificate with the Montenegro Trademark Office along with the claim for entry into the Trademark Register of Montenegro. Once Serbian Trademark Registration was matriculated into the Trademark Register of Montenegro, it will be published in the Intellectual Property Gazette of Montenegro and the IPO will issue the respective Decision on entrance into the Trademark Register. All the rights of the Serbian national trademarks which comply with the above requirement will enjoy the same protection in Montenegro, namely they will maintain the same priority date and the same renewal date as in Serbia. The deadline for complying with the above mentioned procedure is December 16, 2011. Failure to do so results in loss of protection of the referenced Serbian national trademark in Montenegro. The above requirement is not deemed necessary for any Montenegro mark based on a Serbian national trademark for which an action has already been taken before the Montenegro IPO prior to December 16, 2010 (such as renewal, assignment, change of name, etc.).
Montenegro is a member of the Madrid Agreement and the Madrid Protocol.
Nice classification, 10th edition
The application is filed at the Montenegrin IP Office.
Multiple-class applications are possible.
Foreign applicants need a local agent.
A simply signed power of attorney is sufficient – no legalization/notarization is required.
The application process includes a formal examination as well as an examination on absolute grounds of refusal.
If the formal requirements are not fulfilled, the IPO of Montenegro invites the applicant to submit the missing documents. The deadline for submission the necessary documents is 30 days as from the receipt of the invitation (this term is not extendable). In case the Applicant meets the deadline of 30 days and the missing documents are submitted, the filing date of the trademark application will be the date of fulfilling the formal requirements. In case the applicant does not fulfill requirements within the deadline of 30 days, the application will be rejected.
After filing a new Trademark Application, it enters into the Examination procedure in which absolute grounds of refusal are examined, while relative grounds are subject to opposition proceedings. Trademark applications in Montenegro are published for opposition purposes. In case opposition was not filed during the opposition period, or was rejected after filing, the IPO invites the Applicant to proceed with payment of registration fees, protection fees for 10 years period and publication fees.
It is possible to file an opposition within 90 days following the publication of Trademark Application in the Intellectual Property Gazette of Montenegro. This term is not extendible.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
90 days counting from the first day of the month following the month of the publication of the WIPO Gazette.
The trademark is valid for 10 years from the application date (respectively the date of the fulfilled formal requirements). There is a possibility to pay renewal fees for further 10 years (and this action can be repeated unlimited number of times).
The grace period for renewals is 6 months from the expiration date of the trademark.
According to the Trademark Law the trademark holder is obliged to use his mark (Article 17 of the Trademark Law: “If in a period of five years counting from the date of registration of a trademark, Trademark holder does not begin to use the trademark for goods or services for which it is registered, or if he stopped using for a continuous period of five years, the trademark shall cease to have effect, unless there are justifiable reasons for non-use.”).
In case the trademark is not being used on respective market, the same becomes vulnerable for cancellation action based on non-use. The grace period for use is five years as from the registration date or from the date of last use.
The competent authority will not issue a decision on cancellation of a trademark due to its non-use, if the use of the trademark had begun or was continued after the expiry of the five-year period of non-use of the registered trademark and before submission of a request for a cancellation of trademark due to its non-use except if the commencement of continuation of use of the registered trademark occurred after the holder of the fight had become aware that a request for the cancellation of his trademark will be submitted and if the use had begun or was continued within a period of three months before the submission of a request for the cancellation of a trademark.
The official fee for trademark application is EUR 60.00 for up to 3 classes and another EUR 8.00 for each additional class or device mark. Registration fee is EUR 86.00 for up to 3 classes and EUR 13.00 per additional class or device mark. Publication fees are EUR 10.00 for up to 3 classes. Renewal fees are the EUR 86.00 for up to 3 classes and EUR 13.00 for each additional class or device mark.
Trademark Licence Agreement
A licence has to be granted in writing. It is not permitted to license the use of unregistered marks. According to relevant provisions of Montenegrin Trademark Law, a proprietor can register a user in respect of all or of some of the goods or services in respect of which the mark is registered. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of licensing.
There are statutory provisions for the recordal of a licensee with the Trademark Office. However, the validity of a licence agreement does not depend on its recordal in the national register. An unrecorded licence agreement is valid between the entities which entered into such an agreement but it has no effect on third parties. There is no time frame for a recordal.
The following documents are required for a recordal:
1. A certified excerpt of the licence stipulating the parties and the rights licensed
2. The original licence certificate signed by the licensor and the licensee
3. The original power of attorney, simply signed in the name of the licensor
4. The original power of attorney, simply signed in the name of the licensee
The contracting parties can freely determine the terms of the agreement but it must contain:
1. The names and addresses of licensor and licensee Z
2. The remuneration
3. The duration of the licence
4. The scope of goods or services
5. The territory in which the licence is to be used
A licence becomes effective and enforceable against third parties as from the date of issue of the decision on recordal of the licence. According to relevant provisions of the Trademark Law, the licence has to be published in the Intellectual Property Gazette of Montenegro. The Official Gazette is published once every four months.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the owner in infringement proceedings. The registered user may not institute proceedings in his own name if the proprietor refuses or neglects to do so, but he can call upon the owner to institute such proceedings
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