On February 1, 2020, the new Trade Mark Law came into force in Serbia. The law further harmonises the Serbian trade mark legislation with that of the European Union, in particular the Harmonisation Directive 2015/2436 and the Enforcement Directive 2004/48, in an effort to close chapter 7 of the EU accession negotiations relating to IP. Below we outline the main changes.
The Trade Mark Law introduces opposition proceedings, in combination with ex officio examination on absolute and relative grounds.
The trade mark applications are now 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 will be automatically accepted. At the request of the applicant, the opponent must submit evidence of use of its earlier trade mark, otherwise the opposition will be refused. 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. 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 trade marks. Third parties can challenge a trade mark in case of unjustified non-use during a period of 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 trade mark will cease to be valid on the date of filing of the non-use cancellation action and not from the expiry of the five-year period from the registration date, respectively from the date of last use, as it was in the past.
Use of an earlier trade mark is also required to file an opposition /invalidation/infringement action, but only if the trade mark was registered for longer than five years and if the adversary raises an issue of use. If the use is raised in the context of a litigation for trade mark infringement, the Defendant cannot just question the Plaintiff’s use of the earlier trade mark, but is obliged to challenge this trade mark with non-use cancellation action before the PTO.
Trade mark enforcement is improved under the new law. The law provides for liability for intermediaries and features detailed provisions on the collection of evidence, preliminary injunctions, the securing of evidence and the calculation of damages. The statute of limitation remains three years from the date on which the trade mark 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 the case of continuous infringement, the five-year term is calculated from the date of the last infringement, which is a welcome change.
The Law further re-introduces a provision that a trade mark owner can prohibit not only the import and export of infringing goods, but also their transit through Serbia. In the past, the Serbian trade mark legislation provided for the protection of trade marks 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. This is a result of extensive lobbying against national exhaustion on the grounds that it distorts competition and results in higher prices for end consumers. Under the Law, the trade mark owner is able to oppose commercialisation of the goods where it has legitimate reasons 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 all registered trade marks. Pending applications will be subject to the new law if filed after February 1, 2020. Those filed before February 1, 2020 will 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.
FICPI’s view and involvement
FICPI’s international IP attorney community means that news on developments such as the new law in Serbia can be shared with colleagues around the world as they unfold, allowing all FICPI members to benefit from shared expert knowledge. The member directory, regular events and meetings also allow FICPI members to identify local colleagues and to build relationships with trusted IP attorneys.