Sep 09, 2021 (Newsletter Issue 14/21)New Trade Secret Law in ForceOn June 5, 2021, the new trade secret protection law entered into force in Serbia. The new law harmonises Serbian legislation with Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.
For the information to be considered as a trade secret under the new law, it must:
- Have commercial value because it is not generally known or easily available to third parties who normally encounter this type of information.
- Be protected by its holder by appropriate measures to preserve its secrecy.
For a trade secret to enjoy legal protection under the new law, trade secret owners must institute internal trade secret protection policies and take other prescribed protective measures, such as using the term "trade secret" on confidential documents, restricting access to the premises or files where confidential information is located, and entering into confidentiality agreements with persons who may have access to trade secrets.
Under the new law, foreign holders of trade secrets have the same rights as domestic holders only if such protection arises from international agreements in force in Serbia or from the principle of reciprocity. The previous law did not distinguish between foreign and domestic holders.
For more information, please click here Source: www.petosevic.com Jun 17, 2021 (Newsletter Issue 12/21)IP Office Aligned with CP8 On June 10, 2021, the Intellectual Property Office of the Republic of Serbia (IPORS) has updated its methodology to include the principles of the Common Practice (CP8): Use of a trademark in a form differing from the one registered, which was developed by the European Union Intellectual Property Network.
IPORS is the first non-EU IP office to adopt the criteria listed under CP8. This achievement follows the implementation of CP3: Distinctiveness – Figurative Marks containing descriptive/non-distinctive words, and CP5: Relative Grounds of Refusal – Likelihood of confusion (impact of non-distinctive/weak components).
The CP8 principles are included in the Practice Paper, which provides a clear and comprehensive explanation of the principles on which the practice is based. It assesses the impact of additions, omissions and modifications of characteristics, when these changes appear alone or in combination, on the distinctive character of registered word marks, figurative marks and composite marks (combinations of verbal and figurative elements).
The CP8 Practice Paper has been made publicly available in Serbian and English. Source: www.euipo.europa.eu Feb 20, 2020 (Newsletter Issue 2/20)New Trademark Law Introducing Opposition SystemOn 24 January 2020, the Serbian National Assembly adopted a new Trademark Law, which entered into force on 1 February 2020. The new Law introduces a trademark opposition system which will exist alongside the current ex officio examination on absolute and relative grounds.
Per previous regular procedure, the Intellectual Property Office performed an official examination of absolute and relative grounds for refusal of trademark applications. The rule regulating this part of the procedure has remained unchanged.
The new opposition system allows now that interested parties can file for an opposition based on relative grounds for refusal within three months after the publication of the trademark application.
For further information, please refer to the article by Ms Sara Radić, PETOŠEVIĆ Serbia, hereSource: www.petosevic.com Sep 13, 2016 (Newsletter Issue 16/16)
New Domain Name Registration System
On July 26, 2016, Serbian National Internet Domain Registry (RNIDS) started implementing a new domain name registration system affecting all registrants of Serbian top-level domains, the Latin .rs and Cyrillic .срб (srb).
The new system is in line with the protocol used for registering and verifying generic domains (.com, .net and others).
New regulations compliant with the new system entered into force on the same day, July 26, 2016. Under the new rules, registrants are required to verify the email address that they use to register domains, which means that shortly after registering a new domain, a registrant will receive an email with instructions on how to confirm that the email address and other data provided are valid. The verification must happen within 20 days or the domain name will be deactivated.
Under the new rules, email addresses of the registrant and the administrative contact are the required identifying information, which the registrants have to maintain in an active state and keep updated throughout the domain name validity period. Registrants are required to notify their accredited registrars of any changes in contact information.
These newly introduced changes also affect domain name transfers and updates. To transfer domain names to another registrar, registrants will need to retrieve an authorization code and complete the transfer through their accredited registrars. The ownership change documents will be generated by the system and automatically sent to the current registrant’s email address.
Source: www.petosevic.com
Jan 20, 2016 (Newsletter Issue 1/16)Opposition System Soon to be ExpectedThe new Serbian draft trademark law, which aims to introduce the opposition system, has been sent to the government for consideration. It is expected that the new trademark law will be adopted soon. The main changes are as follows:
Observations
Under the draft law, any natural or legal person can file a written observation, only on absolute grounds, within three months from the trademark application’s publication date. This person does not become party to the proceedings. The IPO must take the written observation into consideration and send it to the applicant, who may then submit a written response within 15 days.
Oppositions
According to the draft law, the IPO will conduct formal and substantive examinations on absolute grounds. The substantive examination on relative grounds (earlier rights) will be conducted only if an opposition is filed. Namely, the holder of an earlier trademark or a well-known trademark (regardless of the list of goods/services), the licensee, or the holder of the earlier right to an individual’s name or image, copyright or industrial property right, can file an opposition based on relative grounds for refusal within three months from the application’s publication date. The trademark will not be refused if the holder of the earlier trademark or earlier right explicitly consents to the registration of the later mark. Therefore, the draft law clearly separates the absolute and the relative grounds for refusal.
Registration Certificates
Obtaining trademark registration certificate is optional under the new draft law. The certificate is issued at the request of the trademark holder and upon filing the proof of payment of the prescribed fee.
For more information, please see here
Source: www.petosevic.com Sep 02, 2015 (Newsletter Issue 13/15)Industrial Design Law AmendedThe Law on Amendments to the Law on Legal Protection of Industrial Design, which came into force in Serbia on May 30, 2015, aims to further harmonize Serbian legislation with the EU and bring it in line with Directives 98/71/EC and 2004/48/EC.
For further information on amendments, please check here
Source: www.petosevic.com Feb 25, 2015 (Newsletter Issue 3/15) “Class Heading Covers All” Approach AbolishedThe Serbian PTO explained that in 2014 it made significant efforts to harmonize its practice with practices of other national offices in the EU, singling out the abolishment of the “class heading covers all” approach as the most significant change. The amendments to the methodology for various proceedings before the Serbian PTO, including this change, came into force on January 1, 2015.
Namely, national trademarks will not be registered under the “class heading covers all” approach but under the “means what it says” approach, meaning that the national trademark applicants listing class headings will have coverage only for those goods or services which unambiguously fall under the class headings, whereas some of the general designations under these headings will have to be specified or otherwise refused protection.
The PTO has identified 11 general indications of goods/services (in IC 6, 7, 14, 16, 17, 18, 20, 37, 40 and 45) that are not considered sufficiently clear and precise.
For more information, please see here
Source: www.petosevic.com Mar 12, 2013 (Newsletter Issue 3/13)
Trademark Law Amended
The amendments to the Serbian trademark law were published in the Official Gazette No. 10/2013 on January 30, 2013 and came into force on February 7, 2013.
The most significant novelty is that parallel import is no longer allowed in Serbia. Namely, the previous law prescribed that trademark holders cannot oppose the use of their trademarks in connection with goods marked with such trademarks and placed into commerce anywhere in the world by the trademark holder or other person authorized by the holder. Under the amended law, the previous system of international exhaustion of rights has been substituted with a system of national exhaustion of rights, whereas now the holders cannot oppose the use of their marks with respect to goods bearing such marks and placed on the Serbian market by the holder or other person authorized by the holder. In addition, trademark holders cannot oppose the goods in transit.
Most amendments primarily aim to eliminate certain terminology shortcomings and thus ensure more accurate interpretation and effective implementation of the Law on Trademarks.
In addition, the amendments aim to harmonize Serbian regulations with the corresponding EU legislation, namely the European Directive 2004/48/EC of the Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and the Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks.
The newly amended Article 4 further refines the definition of a trademark in a way that it specifically includes two conditions that must be fulfilled simultaneously. Namely, the sign must be capable of being represented graphically and of distinguishing the goods or services in trade; therefore Article 4 has been completely harmonized with the Article 2 of the Directive 2008/95/EC.
The compliance with the above article has also been included as an additional ground for refusal within Article 5 of the trademark law.
The wording of the provisions prescribing which marks are excluded from protection has been changed to correspond to the provisions of the Directive 2008/95/EC.
According to the amended law, foreign residents no longer have to be represented before the PTO by attorneys at law or patent and trademark representatives. This obligation still stands for the non-resident foreign individuals and entities.
The previous law explicitly prescribed that an exclusive licensee is entitled to sue for the infringement. Now, this right has been granted to all licensees (exclusive and non-exclusive), unless otherwise prescribed by the license agreement.
Lastly, the right of information has been explicitly extended to the persons other than infringers in accordance to the corresponding provisions of the Directive 2004/48/EC.
Source: PETOŠEVIĆ
Jul 04, 2011 (Newsletter Issue 9/11)
Deadline for Re-Registration Approaching
The new trademark law that entered into force in Montenegro on December 16th, 2010, obligates the owners of trademarks registered before the Serbian Intellectual Property Office to request entrance of their rights into the Montenegrin trademarks register by December 16th, 2011.
The obligatory re-registration affects national trademarks registered before the Serbian IPO prior to May 28th, 2008, the opening date of the Montenegrin IPO, unless a renewal or request for recordal of changes or Certificate of Registration had already been filed in Montenegro before December 16th, 2010. The deadline is not extendable. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro.
Source: Petosevic, Montenegro
Oct 01, 2010 (Newsletter Issue 15/10)
Accession to the Nice Agreement
The Republic of Serbia joined the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks on September 17th, 2010.
The said Agreement will enter into force, will enter into force, with respect to the Republic of Serbia, on December 17th, 2010.
Source: www.wipo.int
Dec 24, 2009 (Newsletter Issue 6/10)
New Trademark Law in Force
A new trademark Law came into force in Serbia on December 24th, 2009.
The main innovation of the new Law is the introduction of an Appeal stage in the trademark registration procedure. Namely, according to the previous TM Law, the IPO decisions were final and the only option against decisions of the IPO was to initiate an Administrative Court Procedure before Serbian Supreme Court.
It is now possible to file an Appeal before the Government within 15 days as from the date of receipt of the first instance decision. The Ministry of Science and Technological development will probably decide in the second instance.
The Serbian Supreme Court still remains the last instance in the IP matters since the Appellants can initiate the Administrative Court Procedure against the second instance decision within 30 days as from the date of receipt.
Source: Petosevic, Belgrade, Serbia
Legal basis is the Serbian Trademark Law in force since February 1, 2020.
Serbia 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.
Trade marks which were protected in former Yugoslavia are also protected in Serbia.
Nice classification, 12th edition
A trademark may consist of any signs, in particular words, including personal names, or drawings, letters, numerals, colours, three dimensional shapes, the shape of goods or of the packaging of goods, combination of such signs or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the Register, in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
The following marks types are registrable: individual marks (trademarks, service marks), collective marks and certification trademarks.
Trademark applications are filed at the Intellectual Property Office of the Republic of Serbia.
Multiple-class applications are possible.
If the applicant is a domestic natural or legal person, he does not need an agent. However, foreign applicants with no seat or residence in the Republic of Serbia need a local agent.
A non-legalized power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The IPO examines marks on absolute and relative grounds (ex officio). Upon examination it publishes trademarks for opposition purposes. If there are no obstacles, a trademark will be registered, and the IPO will publish the registration in the monthly Intellectual Property Gazette “Glasnik intelektualne svojine”.
Certain applications can be examined in a fast-track procedure, if the statutory requirements for this procedure are met.
National:The opposition period is 3 months after the publication of the trademark application.
If the trademark application successfully passes the examination on absolute and relative grounds, it will be published in the Serbian IPO’s Official Gazette. Interested parties can file an opposition based on relative grounds for refusal within 3 months from the application’s publication date.
If the IPO receives an opposition, it will forward it to the applicant and invite the applicant to submit a written response within 60 days from receiving the opposition notice. If the applicant does not respond, the opposition will be accepted. The applicant may require the opponent to prove that their earlier trademark was used in Serbia during a period of five years prior to the application’s filing date or its priority date. Opposition proceedings may be temporarily suspended, for up to 24 months, if both parties agree to a cooling-off period, which must be done for negotiations to take place.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from date of application. It is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee of filing a trademark application is RSD 18,960 for filing a wordmark by paper and RSD 14,220 online in up to three classes. The official fee is RSD 3,800 for filing by paper and RSD 2,850 online for each additional class.
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Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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Sep 04, 2023
PETOŠEVIĆ, Belgrade, Serbia