On 30 January 2013, the Serbian parliament adopted amendments to the Trademark Act of 2009. Most changes concern procedural aspects of the enforcement in case of an infringement. The remainder of the amendments mainly consist of minor changes in the wording, made in order to add clarity to, and remove redaction errors in the existing provisions in the law.
Although the amendments do not amount to substantial reshuffling of the law, some of the changes are worth noting. One major novelty is the addition of aesthetic functionality among the grounds for refusal of a trademark application. If the three-dimensional mark consists exclusively of the shape which gives substantial value to the goods, such a mark will not be registered.
Until now, the pertinent provision in the Serbian Trademark Act barred registration of a mark which results exclusively from the nature of the goods themselves and of a mark consisting exclusively of the shape of goods which is necessary to obtain a technical result. The wording of the provision matched the wording of the first two recitals in Article 3(1)(e) of the Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trademarks, and Article 7(1)(e) of the Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trademark. The third recital – “the shape which gives substantial value to the goods” – was absent. When the new Trademark Bill was introduced in the parliament in 2009, the government’s memorandum accompanying the bill did not provide any explanation for the omission.
As of yesterday, however, aesthetic functionality forms part of the Serbian trademark law. As the government explained in the document accompanying the recent amendments, the aim was to bring this provision in full conformity with Article 3(1)(e) of the Directive 2008/95/EC. The Court of Justice of the European Union has only rarely addressed the concept of aesthetic functionality (among the exceptions, Case C-371/06 Benetton v. G-Star [2007] and Case T-508/08 Bang & Olufsen v OHIM (II)[2011]). It will be interesting to observe the frequency through which the cases involving the issue of aesthetic functionality will come to the desks of the Serbian judges, and the standards which the judges will follow when assessing whether the shape of a three-dimensional mark performs a trademark function (to identify the source of the goods) or whether its attractiveness is essential to non-trademark value of the good.
Another interesting novelty in the law is the expansion of the class of persons who can assert an infringement claim. In addition to the trademark proprietor and the exclusive licensee, a non-exclusive licensee will from now on also have the standing to sue, apparently without any non-contractual restriction. As a rule, however, major jurisdictions restrict or outright disallow the right of a non-exclusive licensee to initiate infringement proceedings. In France, a non-exclusive licensee cannot sue (even the exclusive licensee may sue only if the trademark owner, after notice, failed to initiate the proceedings – Art. L. 716-5 of the Code de la propriété intellectuelle). In the United Kingdom, the non-exclusive licensee may bring action if the proprietor fails to take infringement proceedings within two months after being called upon by the licensee to act (Trade Marks Act 1994 (as amended), Sec. 30(3)). The Council Regulation (EC) No. 207/2009 stipulates that “the licensee may bring proceedings for infringement of a Community trademark only if its proprietor consents thereto” (exceptionally, the exclusive licensee may bring infringement proceedings if the proprietor of the trademark, after formal notice, does not sue “within an appropriate period”) (Art. 22(3))
A final remark concerning the amendments to the Serbian Trademark Bill relates to a change that was not made in the law, although the relevant issue was touched upon in the amendments and a change would have helped the lawmakers’ general effort to mold the trademark legislation (and the IP laws in Serbia in general) at the example of the E.U. law. The amendments, namely, make the wording in a provision about the right of trademark proprietor (Art. 43) consistent with the wording in another provision in the Act (Art. 5), in which the concept of dilution is outlined. Both provisions now describe the dilution (without using the term) as a situation in which the use of a famous mark by a third person would take unfair advantage of the repute of the mark, or would be detrimental to the distinctive character or the repute of the mark. What is missing from the scope of dilution is taking unfair advantage of the distinctive characteror the mark. Council Regulation (EC) No. 207/2009, in contrast, prohibits any use without due cause of the sign with reputation which “takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark” (Art. 9(1)(c)).
[Note: This post has been modified by omitting a reference in the fifth paragraph to Section 1125 (a) of the U.S. Lanham Act, which pertains to infringement of an unregistered trademark and therefore is of limited assistance in interpreting the provision on trademark infringement in the Serbian Trademark Act which contemplates registered trademarks only.]
