Trademarks

1. What is a trademark?

Trademark is the right that protects a mark used in the course of trade to distinguish goods and/or services of one natural or legal person from identical or similar goods and/or services of another natural or legal person.

2. What are individual, collective and certification trademark?

Individual trademark is a trademark owned and used by trademark holder (owner). Trademark holder is natural or legal person who is registered in the Register of Trademarks.

Collective trademark is a trademark of a legal person representing a certain type of association of manufactures and/or providers of services, which may be used by persons who are members of such association, under certain conditions.

Certification trademark is a trademark that is used by several companies under supervision of the trademark holder, as a warranty of quality, geographic origin, manner of manufacturing or other common characteristics of the goods and/or services provided by such companies.

3. What are the benefits of trademark registration?

Trademark registration is not a legal obligation; it depends on the decision of natural or legal person who use the mark (trademark). Natural or legal person who does not want to register a trademark will not be punished for non-registering. However, benefits of trademark registration are numerous. For example:

a) Trademark holder has the exclusive right to use a mark protected by a trademark for designating the goods and/or services the mark refers to in the territory where the trademark is registered.
b) Trademark holder is entitled to prohibit other persons from unauthorized use of
a mark identical or similar to the holder’s trademark for identical or similar kind of goods and /or services the holder’s trademark is registered for.
c) Trademark holder can easily prove ownership with the trademark registration certificate issued by the IPO.
d) Trademark is a significant tool for: trademark holder’s monopoly and goodwill, future investments, revenue from licenses and franchising agreement or assignment of a trademark.

4. What is a trademark search?

A proper first step is to carry out a preliminary search of existing trademark registrations (or prior trademark applications) which are the same or similar to yours and for the same or similar goods or services. Although it is not mandatory, this step will assist you in determining whether a similar trademark already exists, in order for you to avoid trademark infringement (unauthorized use) and potential lawsuits. For this service, you can apply for a trademark search in the Intellectual Property Office. Following that, we inform you of such earlier trademarks or trademark applications as a part of the examination process. You will then have to decide whether to withdraw your application or not. In the response to a request, IPO only expresses the opinion regarding the similarity. However, IPO doesn’t suggest whether applicant should or should not apply for a trademark registration. The applicant should reach a decision by himself. During a trademark procedure, the IPO does not need to adhere his opinion expressed in the response.

When applying for a trademark search, the applicant should submit an application consisting of:
a) a sign which the search is to be carried out for;
b) number of classes of the International classification of goods and services under the Nice Agreement

The applicant has also to furnish the evidence of payment for the cost of trademark search in the in the amount of 1.180, 00 RSD, which is to be paid to the transfer account of the Intellectual Property Office 840-39845-97, reference number 97.

The amount of 1.180,00 RSD refers to one sign which is related up to three classes of the International classification of goods and services under the Nice Agreement.



Other important questions regarding trademarks

1. Can an applicant subsequently make an essential modification to the representation of the mark in the application or modification of list of goods and services?

Essential modification of the representation of mark in the application can not be made subsequently. Any change of the distinctiveness of sign is considered as an essential modification. The distinctive element of the sign has a distinctive function for goods and/or services; therefore, modification of that element of the sign is essential modification.

Subsequent extension of the list of goods or services is not allowed. However, the list may be narrowed down. Adding a new type of goods or services which do not exist on the previously submitted list of goods or/and services is treated as an extension of the list. Adding a new type of goods or services instead of those originally stated within the framework of the same class will be treated as an extension of the list. (e.g. cigarettes – instead of tobacco; jackets – instead of suits).

Specification of goods and services will not treated as an extension of the list of goods or/and services. Specification occurs when the existing (broader) category of goods is limited on the individual goods which belong to that category. For instance, clothing listed under Class 25 can be limited, i.e. a precise specification can be given by indicating: suits, jackets, skirts, trousers.

2. What the applicant needs to do if during the procedure for TM registration or after registration and during duration of a trademark, change of name and/or address (seat) of the applicant or the trademark holder occurs?

The applicant needs to submit the request for the change of his name and address (Form Ž-3) to the IPO. The request is to be filled in by a typewriter or computer. If you want to download the request form for entering a change in the name and address into the Registry (Form Ž-3), please click on the appropriate format: (PDF_format) (WORD_format).

It is very important that the applicant or trademark holder informs the IPO on any change regarding his name or address (seat). In that way, the IPO could communicate with the applicant during the trademark procedure or invite the trademark holder to pay the fee for renewing the trademark.

In addition to the request for changing the name and address, the applicant needs to enclose a proof of payment of the fee for the recordation of alterations. If the request is filed throught a representative, the respective Power of Attorney has to be enclosed with the request.

Regardless of the changes in the name or address or both the name and the address, the amount of fee for the recordation of alterations to be paid is 1.830 RSD.

3. If a change of the legal status of legal person occurs during the procedure for trademark registration or after registration and during duration of a trademark, what should a legal person as an applicant or trademark holder do?

Legal person needs to file a request for assigning the trademark or the right arising from the trademark application (Form Ž-5) to the IPO. The request should be filled by a typewriter or a computer. If you want to download this form (Form Ž-5), please click on the appropriate format (PDF_format) (WORD_format).

In addition to the properly filled assignment request, the applicant needs to enclose a proof of legal ground for the registration requested, a proof of payment of the fee for the recordation of alterations. If the request is filed through a representative, the respective Power of Attorney has to be enclosed with the request.

A proof of legal ground will depend on the legal ground for assignment. When an assignment agreement is a legal ground for the assignment, despite the properly filled request of assignment, it is necessary to enclose one of the following: original agreement signed by the contracting parties, original extract of the agreement on the assignment of rights signed by the contracting parties, original statement of assignment signed by the contracting parties, or a verified photocopy of the abovementioned documents.

If the assignment of rights is a result of a merger, despite the properly filled request of assignment, it is necessary to enclose a proof - original document issued by the competent authority certifying the merger of the enterprises (extract from the business register),
or a photocopy of that document verified by the authority issuing that document.

If an assignment of rights is based on the law, or a court or administrative
decision, despite the properly filled request of assignment, it is necessary to enclose an evidence - the original or the verified photocopy of the court ruling or another document certifying that change.

If the abovementioned documents are drawn up in a foreign language, a translation thereof has to be submitted, certified by a sworn-in interpreter.

The fee to be paid for a trademark assignment or assignment of right arising from the trademark application is 3,670 RSD. If the assignment refers to more trademark application/trademarks, the fee amounts to 2 450 RSD per trademark application/trademark.

4. What kind of a trademark application can be reviewed in a fast-track procedure?

General rule concludes that applications are to be examined in the order determined by the dates of their filing to the IPO.

In derogation from that general rule, applications can be reviewed in a fast-track procedure, only if the statutory requirements for this procedure are met:

1) if judicial proceedings or inspection surveillance or customs procedures have been initiated upon request of the court or the competent market inspection authority and/or the customs authority;

2) if an application for the international trademark registration has been filed, and it is subject to the Madrid Agreement;

3) if a fast-track procedure has to be applied pursuant to other regulations (e.g. if the trademark application refers to pharmaceutical products)

Fee to be paid for a request to file a trademark application for an expedited examination amounts to 6.100,00 RSD.

5. Is it obligatory to use a trademark on the market?

Yes, it is. Trademark holder would not be under misdemeanor or criminal responsibility for not using his own trademark on the market, but he would assume the risk for revocation of the trademark.

If, without justified reason, a holder of the trademark, or a person authorized by him, does not seriously use trademark on the domestic market for marking of goods and/or services comprised within for an uninterrupted period of five years from the day on which the trademark was entered in the Trademark Register, or from the day of its last use, any interested party could request from the IPO to issue a decision on revocation of a trademark.

The IPO shall deliver a regular request to the trademark holder and invite him to submit a reply and to prove the opposite – that he uses his own trademark. After the completion of the procedure based on the request for the revocation of the trademark and given proofs, the IPO shall render a decision on the revocation of the trademark as a whole or only in respect of certain goods and/or services, or a decision rejecting the request.

6. What is being considered as a use of a trademark?

Use of a trademark includes:

  • affixing the protected mark to the goods, the packaging for the goods or labeling
    instruments (labels, stickers, bottle stoppers, and the like);
  • offering of goods, their entry into circulation or storage for such purposes, or supply of services under the protected mark;
  • import, export or transit of the goods under the protected mark;
  • using the protected mark in business documentation or in advertisements.

7. What is not being considered as a use of a trademark?

  • advertising the registered trademark without possibility of supplying the goods and/or using the services comprised within;
  • payment of taxes for extending the validity of the trademark or conclusion of contracts on transfer of rights, license, pledge, franchises or similar.


Trademark registration procedure

1. Who can apply for a trademark registration?

Any natural or legal person trading with goods or services can apply for a trademark registration. The applicant does not need to submit any proof of such activities.

2. Is it mandatory to submit a trademark application through an attorney?

No, if the applicant is a domestic natural or legal person. However, it is mandatory in case the applicant is a foreign natural and legal person.

3. When does the procedure for a trademark registration start?

It starts with a filing of application for trademark registration to the IPO, either via post office or directly in the IPO premises. Electronic application is not acceptable.

Submitted application which contains elements referred to the Law, will be entered into the Register of Applications, where the note of a filing number, date and the time of the receipt will be given by the IPO. The filing date is also a priority date. However, there are exceptions from this general rule (please see under question no. 6)

4. What is the priority right?

It is a right which guarantees to the applicant that his application will enjoy priority in examination procedure over all other applications subsequently filed for the same or similar mark concerning the same or similar product and/or service.

The priority rights originate from the date when a trademark application has been properly filed to the IPO. The applicant can file a request for issuing a priority certificate to the IPO. This should be submitted on the blank paper with the reference of the “Ž” number of trademark application. The request for issuing a priority certificate should include in particular: data on the applicant, representation of the mark, list of the goods and/or services, and a proof of payment of fee for the certificate. The fee for the first certificate not exceeding ten pages is 1460 RSD; each subsequent certificate to the same applicant not exceeding ten pages costs 370 RSD; the fee for each subsequent page exceeding the tenth page is 30 RSD.

5. What are the essential required elements of a trademark application?

a) request for the trademark registration;
b) mark for which protection is requested;
c) list of goods and/or services to which the mark relates.
d) proof of payment of the fee for trademark application

What is the request for a trademark registration and where can an applicant find it?

The request for the trademark registration is a form printed by the IPO. The applicant can find it in the IPO, or order it by phone or through the post office. If you want to download the form of the request for the trademark registration (Form Ž-1), please click on the appropriate format (PDF_format) (WORD_format)

The request for the trademark registration should be filled by a typewriter or computer, in Cyrillic or Latin alphabet. The IPO will not process a hand-written request.

If you wish to download properly completed request for the trademark registration (Form Ž-1), please click on the appropriate format (PDF_format) (WORD_format)

How many copies of the request for the trademark registration are required?

Two. Both of them have to be identical.

About the mark for which protection is requested

The subject of a trademark protection is the sign which the applicant uses in course of trade to distinguish his/her goods and/or services. Examples of those signs are shown below:

1. Sign in the word

APPLE
DUKAT
2. Word written by a special font
(considered as logos)
3. Logo
4. Combination of words and logos
5. Slogan
6. Person's name

WILL SMITH

ANTONIO ANTONIO BANDERAS

7. Combination of colors
8. Musical mark


The subject of the trademark protection can be a three-dimensional sign which represents three-dimensional shape. Graphical representation of a three-dimensional sign should be made such that it would be possible to conclude its shape. Apart from submitting trademark application, the applicant needs to enclose a graphical representation of the mark or a photo of the mark. The representation of the mark should include clearly given details showing that it is indeed a three-dimensional sign. Examples of these signs are shown below:




The sign should be printed on a quality paper, on the surface no bigger than the square on the trademark application (80 mm side). Also, the sign should not be put over the surface less than a square with a side of 15 mm length.

The sign should be submitted in an envelope with two identical copies. Envelope has to be sealed up. Back of envelope has to include a notice “copies of the sign”. Copies should not be paired by stapler or paper clip. Apart from two copies submitted, one copy of the sign should be inserted on the square of a trademark application

The sign which consists only of words with normal fonts can be printed on the square of a trademark application by computer or a typewriter. Copies of the sign in an envelope should be identical to the original on the trademark application. If the sign includes colors, they should be precisely listed on the trademark application and fully match the appearance of the sign. Representation of the sign can be submitted in electronic form.

6. Which trademark application elements should be submitted in certain cases?

a) Proof of international priority right
b) Proof of an exhibition or a fair priority right
d) Power of attorney
d) General act on collective and warranty trademark

a) Proof of international priority right

Proof of international priority right is a necessary element of a trademark application only in the case when the applicant calls upon such priority in his application.

Priority right originates from the date when a trademark application has been properly filed to the IPO. This rule has exceptions. Under certain conditions, recognition of the international priority right can be given to the applicant, provided that the:
• applicant is a national of any country of the Paris Union;
• application submitted to the IPO refers to the same mark as the one in the application submitted to the country of the Paris Union;
• application for the same mark is filed in the Republic of Serbia within six months from the effective date of the application in the concerned country;
• the application includes notation of the application number and/or the registration number of the trademark submitted in the country of the Paris Union, and the name of this country;
• applicant submits certified transcript of the application submitted to the country of the Paris Union (competent authority of that country performs certification), and translation of the application, certified by a sworn-in interpreter within three months from the date when the application was submitted to the IPO.

b) Proof of an exhibition or a fair priority right

Proof of an exhibition or a fair priority right is a necessary element of a trademark application only in the case when the applicant calls upon such priority in his application.

An applicant who has, within three months prior to filing the application, used the mark to distinguish product and/or service in an exhibition or a fair of international character in the Republic of Serbia or in any other member-country of the Paris Union or the World Trade Organization, can request the recognition of the priority right in his application from the date of the first use of such mark.

Competent authority of the competent body of a member-country of the Paris Union or the World Trade Organization issues proof (certificate) of an exhibition or a fair priority right. Certificate should provide information on the nature of an exhibition or a fair, the place where it was held, opening and closing dates, and the date of the first use of the mark for which the protection is requested.

The attestation certifying that an exhibition or a fair held in the Republic of Serbia was of officially recognized international character shall be issued by the Chamber of Commerce of the Republic of Serbia.

c) Power of attorney

Power of attorney is a necessary element of trademark application in the case when the applicant submits application through attorney or IP agent.

Power of attorney represents an agreement signed by the applicant and attorney or IP agent, which provides a legal base for representation of the applicant in trademark procedure by the attorney. Power of attorney should be signed by both applicant and attorney and include the reference of a filing number (Ž number). It should be submitted in original form. Copy of the power of attorney will not be taken into account. However, there are two exceptions from this rule:
• if the applicant submits multiple trademark applications through an attorney, it is enough to submit only one original of the power of attorney with photocopies for other applications. Each copy should include clear reference to the application which includes original power of attorney;
• if the general power of attorney is signed with the attorney, who represents the applicant in all IP-related activities, than the application can include photocopy of such general power of attorney. General power of attorney should be deposited in the IPO. The copy of it should include the reference to the number of the deposited general power of attorney.

d) General act on collective and warranty trademark

General act on collective trademark is a necessary element of a collective trademark application. General act on warranty trademark is necessary element of a warranty trademark application. Details regarding necessary elements of the general act on collective and warranty trademark can be found in the Article 13 of the Law on Trademarks, and in the Article 5 of the Regulation.