Serbia Eyes Trademark Opposition System, Appoints New Patent Office Head

The Serbian government and parliament are currently drafting a new trademark law for the country which is to introduce the trademark opposition system into national IP legislation. Meanwhile, the cabinet of Prime Minister Aleksandar Vucic recently appointed Vladimir Maric as the new acting director of Serbia’s Intellectual Property Office (IPO).

The planned law is expected to introduce a number of key changes into Serbia’s IP law and ensure increased harmonisation between the country’s legislation and the European Union law as Belgrade is pursuing its membership negotiations with Brussels. In December 2015, Serbia opened the first two chapters in its negotiations to join the EU, on normalising Serbia’s relations with Kosovo, and on financial control.

The country’s trademark law was passed by the Serbian Parliament on 11 December 2009, [available here, in Serbian] and amended on 30 January 2013 [available here, in Serbian].

Following the completion of public consultations on the new draft law on 30 December 2015, the bill was sent to the country’s government for final approval, and then to the Serbian Parliament for further legislative work. As a result, it is expected that “the new trademark law will be adopted soon,” Serbian law firm Petosevic said in an analysis [available here, in English].

In its annual report for 2014 [available here, in English], the IPO states that, while it “has been emphasized that the harmonization of the laws in the field of intellectual property … in the Republic of Serbia with the EU legislation is fulfilled to a great extent, … there is also need for further harmonization of these regulations.”

In 2014, the IPO obtained 6,273 trademark applications, including 4,239 applications through the Madrid system (operated by the World Intellectual Property Organization) and 2,034 domestic applications.

In a worrying sign, this was less than in any other year since 2005, but at the same time, Serbian applicants submitted 171 applications for international registration of trademarks within the Madrid system, up 21 from a year earlier, the report states.

This said, the IPO registered 5,866 trademarks in 2014, which represented an increase of 6.3 percent compared with a year earlier.

Under Serbian law, any person or legal entity which objects to the registration of a trademark on both absolute and relative grounds for refusal can file a written observation to the IPO. Under the draft law, persons and legal entities will be allowed to file such written observations only on absolute grounds, within a three-month period following the publication of a trademark application.

Those filing the observations will not become party to the proceedings. Contrary to the current state of affairs, the IPO will be required to take the written observation into consideration, contrary to the current state of affairs, and send it to the applicant, who may then submit a written response within a 15-day period.

Furthermore, the IPO is to perform formal and substantive examinations on absolute grounds, while substantive examinations on relative grounds will only be performed if opposition is filed by a licensee, holder of an earlier trademark or a well-known trademark. Opposition based on relative grounds for refusal could be filed within a three-month period following the application’s publication.

Regarding registration certificates, obtaining trademark registration certificates will be optional under Serbia’s new trademark law. The certificate will be issued at the request of the trademark holder and upon filing a proof of payment for it.

Trademark Scam Warning

On a related note, the latest legislative amendments come following reports of numerous cases in which unauthorised entities contact Serbian companies, submit misleading invoices to them and request they pay for registering or renewing their trademark applications based on false credentials, according to the Serbian office.

“Our applicants often receive invoices and pay the invoiced fees for the registration and/or renewal of a trademark, or the maintenance of an industrial design in a register by unauthorised agencies and organisations,” the IPO said in a statement on February 1, 2016 [available here, in Serbian].

This is in line with a similar statement released by the European Union’s Office for Harmonization in the Internal Market (OHIM), the trademark office, which said that users “are receiving an increasing amount of unsolicited mail from companies requesting payment for trade mark and design services such as publication, registration or entry in business directories” [available here, in English].

Fines for IP law infringement are most likely to remain at a relatively low level in Serbia. Under Art. 84 of the consolidated trademark law [available here, in English], companies and other legal entities who have infringed a trademark for commercial purposes could be sanctioned on grounds of corporate offence by a fine of between RSD 100,000 Serbian dinar (US$919) and RSD 3 million (US$27,570). The responsible person within such a legal entity could be imposed a fine of between RSD 50,000 (US$459.5) and RSD 200,000 (US$1,838),

An entrepreneur who has infringed a trademark or a right related to its application could be sanctioned with a fine of between RSD 50,000 (US$459.5) and RSD 500,000 (US$4,595), while other individuals could be imposed fines of between RSD 10,000 (US$92) and RSD 50,000 (US$459.5), according to Art. 85 of the consolidated trademark law.

New IPO Director

Maric, who was appointed as the IPO’s acting director on 4 January, is a career specialist in the office who has worked in the IPO since 1998. Prior to taking helm of the state-run institution, Maric held a number of positions in the IPO, the office said in a statement [available here, in English]. Among others, he served as the head of the IPO’s Trademark Department, and the assistant director for copyrights, related rights and international cooperation sector.

In addition to his work in the office, Maric has also worked as a university lecturer, teaching intellectual property. The new acting director is an author of three books on IP rights, and has also authored a number of publications on trademarks and copyrights.

The IPO was set up in 1920 and employs close to 100 persons, according to Integrating Intellectual Property into Innovation Policy Formulation in Serbia, a report released by WIPO in 2014 [available here, in English].

 

Image Credits: IPO