As of the 1st of February, a new Trademarks Act applies in Serbia. The Act introduces a significant number of changes in the Serbian trademark law, some of them arising from the need to close the earlier gaps between Serbian and EU trademark law.
The new law also institutes procedural novelties which are of primary interest for the Serbian practitioners who take part in infringement litigation. The focus of this newsletter, however, is on those aspects of the law that concern registration of a trademark and legal grounds for trademark infringement.
1. Introducing opposition into the trademark registration proceedings
The institution of opposition is probably the most important novelty in the Trademarks Act. In order to prevent registration of a mark by the Serbian Intellectual Property Office (“IPO“), proprietor of an earlier right can file an opposition. Although Serbian legislator moulded the opposition procedure after the EU model, a few particularities should be brought to attention.
Serbian Trademarks Act recognizes the same grounds for opposition as the EU Trademark Regulation of 2017. In contrast to the Regulation, however, the Trademark Act does not prescribe that a notice of opposition may be given by a licensee authorized by the proprietor of an earlier trademark.
If the IPO finds the opposition admissible, it will invite the applicant to submit his observations. The applicant may request proof of genuine use on the part of the opponent in respect of a trademark registered for a period of five years or longer.
Only if the two parties make a joint request to that effect, will the Serbian IPO approve a “cooling-off” period, which can last for 24 months at the longest. This part of the new Trademark Act differs from the corresponding part of EU Delegated Regulation (EUTMDR), under which adversarial part of the opposition proceedings cannot begin in the first two months after the EU Intellectual Property Office found the opposition admissible.
2. Adopting the principle of international exhaustion
Contrary to the previous Trademarks Act which stood on grounds of national exhaustion, the new Trademarks Act adopts the concept of international exhaustion. Therefore, once the trademark proprietor places, or consents to placing, on the market anywhere in the world goods protected by the trademark, the proprietor has exhausted its right to prohibit further circulation of the goods. In contrast, the previous law prescribed that only if the goods were put on the market in Serbia was the proprietor unable to prohibit further resales in the country.
3. Intermediary liability
Intermediary liability is for the first time explicitly prescribed in Serbian Trademark Act. In the case of infringement, the rights holder is able to file a claim not only against the infringer, but also against the intermediaries whose services the infringer used in the course of infringement.
4. Breach of licence agreement is trademark infringement
The law strengthens position of the trademark proprietor in the context of a licence agreement. The licensee who contravenes provisions of the agreement is responsible not only for a breach of contract, but for trademark infringement as well. The consequences of the breach are therefore more serious than they were in the past: the court may order that the decision be made public at the licensee’s expense; the licensee may be obliged to provide information regarding origin of the goods or services in question, distribution channels, and persons who participated in the infringement, and to hand over documentation in relation to the infringement; and, even criminal liability is an option.
5. Comparative advertising in a manner that is contrary to law: trademark infringement
Trademark proprietor may now claim trademark infringement if the defendant used the sign in comparative advertising in a manner that is contrary to law. Serbian Advertising Act already prohibits certain forms of comparative advertising, and the sanctions include injunction, correction of the advertising message, fine for a misdemeanor, and publication of a court judgment. As a trademark infringement, comparative advertising may also result in compensation for incurred damages.
6. Right to prohibit preparatory acts in relation to the use of packaging or other means
Rights proprietors are now entitled to prevent trademark infringement in the stage of preparation. Where the risk of infringement exists, the proprietor has the right to prohibit affixing a sign identical with, or similar to, the protected trademark on the packaging, labels, and other items on which a mark may be placed. Moreover, some further activities in relation to these objects, such as offering or placing them on the market, importing and exporting, etc., can also be prohibited.
7. Trademark registered in the name of an agent or representative
Where a trademark is registered in the name of the agent or representative of a person who is the proprietor of that trademark, without the proprietor’s authorisation, the latter now has the right to either oppose the use of his mark by his agent or representative, or to request assignment of the trademark, or both. It is not clear whether the provision means that registration of an identical trademark only is contentious, or the trademark proprietor should also be able to exercise the rights in relation to registration of a very similar trademark.
8. Licensee’s right to sue
Licensee’s right to file a claim for trademark infringement is now restricted, as it is no longer possible for a licensee to sue without the trademark proprietor’s consent. Exceptionally, licensee in an exclusive trademark license agreement may sue the infringer if the trademark proprietor took no action after the licensee formally informed him of the infringement.
9. Restitutio in integrum
The new Trademark Act now allows for restitutio in integrum in a number of stages in the proceeding before the IPO. That means that the trademark applicants or proprietors who initially failed to comply with a time limit for justified reasons will be able to exercise their rights.
10. Decisions of the Serbian Intellectual Property Office are final
The new Trademarks Act put an end to the two-instance procedure principle. Once the IPO takes a decision, the dissatisfied party no longer has the possibility of filing an appeal. However, administrative litigation can be initiated.
11. Trademarks as objects of enforcement
The law makes it explicit that trademarks are suitable as objects of enforcement. Under the general enforcement legislation it had already been possible to attach a trademark in enforcement proceedings.