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New Trademark Law came into force in Serbia

On February 1, 2020, the new Trademark Law came into force in Serbia. The Law further harmonises the Serbian trademark legislation with that of the European Union, in particular with the Harmonisation Directive 2015/2436 and the Enforcement Directive 2004/48.

Below is an outline of the main changes.

The Trademark Law introduces opposition proceedings, in combination with ex officio examination on absolute and relative grounds. The trademark applications are first examined on absolute and relative grounds and, if found suitable for registration, they are published in the Intellectual Property Gazette for opposition purposes. The deadline for opposition is three months from the publication date. If the applicant does not respond, the opposition is automatically accepted. The Law provides for a maximum cooling-off period of 24 months.

The decisions of the Serbian IP Office can be challenged by filing an administrative lawsuit before the Administrative Court. The new law abandons the possibility of appealing to the Board of Appeals at the Ministry of Education, Science and Technological Development. The decisions of the Administrative Courts can be further challenged in the revision proceedings before the Serbian Supreme Court of Cassation.

Like the old Law, the new Law provides for the mandatory use of trademarks. Third parties can challenge a trademark in case of unjustified non-use in a period of time longer than five years starting from the registration date or the date of last use. The novelty is that, in case of cancellation for non-use, the trademark ceases to be valid on the date of filing of the non-use cancellation action. In the past, the trademarks ceased to be valid on the date of expiry of the five-year period (from the registration date, respectively from the date of last use). Use of an earlier trademark is also required in an opposition/invalidation/infringement action, but only if the trademark was registered for longer than five years and if the adversary raises an issue of use. If this issue is raised in the context of a trademark infringement action before the Court, the defendant will be directed to challenge the plaintiff’s trademark by way of a non-use cancellation action before the IP Office.

Trademark enforcement is improved under the new Law. The Law features detailed provisions on the collection of evidence, preliminary injunctions, the securing of evidence and the calculation of damages and provides for liability for intermediaries. Further, the Law introduces a provision allowing trademark owners to prohibit the use of their trademark in comparative advertising in a manner which is contrary to law. The statute of limitation remains three years from the date on which the trademark owner became aware of the infringement and the identity of the infringer, and five years from the date of the infringement. The novelty is that, in case of continuous infringement, the five-year term is calculated from the date of the last infringement, which is a welcome change.

The Law re-introduces a provision that a trademark owner can prohibit not only the import and export of infringing goods, but also their transit through Serbia. In the past, the Serbian trademark legislation provided for the protection of trademarks against goods in transit but, following changes in the European legislation, such protection was removed from the Serbian legislation. The re-introduction of this provision is a welcome move.

The less welcome move is that the Law replaces national exhaustion by international exhaustion, which will change into European exhaustion only when Serbia joins the European Union. The trademark owner is able to oppose commercialization of the goods where it has legitimate reasons for that and especially where the condition of the goods is changed or impaired after they have been put on the market.

The new Law applies to trademark applications filed after February 1, 2020 and trademarks which were registered on that date. The pending applications filed before February 1, 2020 will continued to be examined under the old law. The same goes for legal proceedings (e.g., cancellation and infringement proceedings) which were initiated before February 1, 2020 and which were still pending on that date.

The Serbian IP Office is currently working on trademark applications filed before February 1, 2020. These are examined under the old Law and are not published for opposition. So far there have been just a few trademark applications which were published for opposition purposes. They were all filed after February 1, 2020 and examined according to an accelerated procedure. In the past couple of weeks, the work of the IP Office has slightly slowed down because of the COVID-19 pandemic. It will likely take another 3-6 months before the Serbian IP Office starts publishing applications for opposition purposes on a larger scale.

Gordana Pavlovic, Cabinet Pavlovic East Europe, Brussels and Belgrade

March 27, 2020