Serbia, EU, USA – a trademark law comparison

This post deals with the provisions of the 2009 Trademark Act of the Republic of Serbia (Serbian Trademark Act) which regulate certain trademark law issues differently from the corresponding rules in the European Union (E.U.) and/or the United States (U.S.). This depiction should help the readers with expertise in European and/or U.S. trademark law to situate Serbia on the world trademark law map. References to the specific provisions in the relevant laws and the Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark (CTMR) are omitted, to make the piece user-friendly. By no means does this post exhaust the comparative law analysis of differences between the three set of rules (Serbia, E.U. and U.S.). The focus, this time, is on the differences we deem to be more important than those left out.

Constitutive nature of registration

• In Serbia, rights in a mark result from the registration, which therefore has a constitutive effect. Without registration, a mark is not protected. In contrast, in the U.S. and some European countries, including the United Kingdom and Italy, ownership of a trademark is acquired by use in commerce; hence, registration has only a declaratory character.

No intent-to-use requirement

• Both in Serbia and under the Community mark (E.U.) regime, the applicant does not have to state a bona fide intent to use the mark in commerce. In the U.S., however, if the applicant is not already using the mark, a verified statement confirming bona fide intent to use it is required for the mark to be registered.

Grounds for refusal to register

• Serbian law does not classify the grounds for refusal of registration in two groups – absolute and relative grounds – as does the CTMR. In line with the integrated approach, the Serbian Intellectual Property Bureau examines ex officioall potential grounds for refusal. The E.U. Office for Harmonization in the Internal Market (OHIM), in contrast, looks only into absolute grounds for refusal, leaving it to the interested parties to oppose registration on relative grounds. The U.S. system lies somewhere in between: the US Patent and Trademark Office examines all grounds except those indicating dilution.

• In Serbia, unlike in the E.U. and the U.S., aesthetic functionality is not a ground for refusal to register a mark. The provision on functionality in the SerbianTrademark Act bars registration of a sign consisting exclusively of the shape of goods which is necessary to obtain a technical result. An identical provision exists in the CTMR, but, unlike the Serbian Trademark Act, the Regulation also prohibits registration of a sign that consists exclusively of “the shape which gives substantial value to the goods”. Although the doctrine of aesthetic functionality remains controversial in the U.S., it has been accepted by most courts, and the Supreme Court approved it in Qualitex Co. v. Jacobson Products Co. (1995).

• The non-exhaustive list of protectable marks in the Serbian Trademark Actincludes “graphically presentable musical notes”. Non musical sounds cannot be registered as marks. The OHIM, in contrast, accepts non musical sounds if the graphic representation by means of an oscilogram or sonogram is accompanied by a sound file, through electronic filing. The U.S. Patent and Trademark Office has accepted registration of sounds such as a lion’s roar, hand knocking on a door twice, and the sound of burning methamphetamine beginning with the flick of a lighter.

• In Serbia, permission by relatives of a deceased person is a precondition for registration of a mark containing a personal name of the deceased. The CTMRdoes not directly address the issue of a mark containing the name of a deceased person. In the US, consent is needed when a mark comprises the name of a deceased U.S. president, but not when it comprises the name of any other deceased person.

Absence of opposition proceedings

• As a consequence of rule that the Serbian Intellectual Property Bureau examines all grounds for refusal ex officio, the Serbian Trademark Law does not provide for opposition proceedings. Third parties may only submit written observations to the Intellectual Property Bureau. In contrast, both under the CTMR and in the U.S., opposition is the backbone of the proceedings for registration. Both at the E.U. level and in the U.S., refusal of registration on the basis of dilution is possible only if the owner of the famous mark opposes the registration. Under the E.U. system, the same rule also applies with respect to likelihood of confusion.

Collective marks and certification marks

• The Serbian Trademark Act explicitly provides for recognition of guarantee marks (certification marks) as a category distinct from the collective marks. The U.S. Lanham Act also refers to both groups of marks as registrable under the Act. The CTMR operates only with the term “collective mark”. However, the OHIM in practice recognizes marks that certify certain characteristics or quality of the goods or services, either as Community collective marks or as Community individual marks.

Protection of well-known marks from confusingly similar marks

• The Serbian Trademark Act and the CTMR distinguish between two groups of well-known/famous marks. The first group includes well-known foreign marks, i.e. marks which are well-known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property. Even if such marks are not registered in Serbia (i.e. at the Community level, as the case may be), they enjoy protection from identical or similar marks used for identical or similar goods or services. In the U.S., the Lanham Act does not address the issue of well-known foreign marks. The Federal courts of appeals have taken different views on whether these marks, if they are not registered or used in the U.S., enjoy protection.

Protection of well-known marks from “dilution”

• The second group of well-known marks is comprised of “marks of high reputation”, as the Serbian law refers to them. The CTMR uses the term “reputation” in lieu of “high reputation”, while U.S. law calls these marks “famous”. In all three legal systems, such marks are protected from the use of identical or similar signs even for goods or services which are not similar to those for which the mark with a reputation is used. The chart below summarizes the similarities and differences between the three jurisdictions in regard to “dilution”:

• Protection of marks with reputation (famous marks) from domain name hijacking is not regulated by the Serbian Trademark Act, but it will be briefly addressed here to complete the reader’s understanding of the protection of marks with reputation in Serbia. Regulations on .rs Domain Name Dispute Resolution Proceedings, adopted by the Serbian Chamber of Commerce in April 2011 and governing domain name disputes, leave a mark with reputation unprotected from domain name registration when activities of the registrant concern goods or services that are not similar to those covered by the mark. In contrast, the .eu Alternative Dispute Resolution Rules, the Lanham Act, and ICANN’s Uniform Domain Name Dispute Resolution Policy do not condition protection of a mark upon identity or similarity of goods/services with those of the wrongful domain name registrant.

Trademark licensing

• The Serbian Trademark Act prohibits licensing of collective marks to those outside the association which owns the mark. The Lanham Act, however, does not prohibit such licensing of a collective mark (see, e.g., Professional Golfers Ass’n of America v. Bankers Life & Cas. Co. (5^th Cir., 1975). The CTMR does not address the issue.

Invalidation and revocation of a mark

• The general rule under the Serbian Trademark Act is that a mark may be declared invalid at any time if it has been registered against grounds barring registration. With respect to genericness of the registered mark, its functionality, deceptiveness, and other grounds for refusal which correspond to the “absolute grounds” in some national laws and the CTMR, the proceedings may be initiated by any party with an interest or by the public prosecutor. However, only the holder of an earlier right or a person authorized by him may initiate invalidation proceedings on the basis of identity of signs and identity of goods, a likelihood of confusion, a likelihood of dilution, and a conflict with other intellectual property rights. The precondition for obtaining invalidation on the latter grounds is that the holder of an earlier right has not knowingly acquiesced to use during the five consecutive years of the infringing mark which had been acquired in good faith.A separate chapter in the Serbian Trademark Act addresses revocationat any time of a trademark for reasons which occurred after it has been registered (non-use, mark has become generic, misleading use of the mark, collision with the public order and morality, and improper use of collective and certification marks).

  These provisions of the Serbian law strongly resemble those in the CTMRconcerning revocation and invalidity of a trademark. An important difference is that, under the CTMR, only natural persons and legal persons engaged in commercial activities may initiate the proceedings.
  In the U.S., §14 of the Lanham Act groups together all grounds for the cancellation of a mark. The relevant distinction is between the grounds upon which those seeking cancellation can rely at any time and the grounds that are subject to a five-year statute of limitations. The latter group includes, as it is to be expected, the likelihood of confusion or dilution, but also descriptiveness (with its variations), which in the E.U. and in Serbia is not subject to the statute of limitations.

• The Serbian law authorizes the person whose legal interest has been violated by a trademark application filed in bad faith, or by a registration pursuant to such application, to request the court at any time to declare him as an applicant or the right holder, as the case may be. This consequence of invalidation is not mentioned in the CTMR or in the Lanham Act.