How to apply

International protection of trademarks

Trademark is a territorial right that produces legal effect only on the territory of a country for which the trademark has been registered. Therefore, if you want to protect your trademark, apart from the territory of the Republic of Serbia, also in other countries, it is necessary to file in the Office the request for the international registration of trademark.

International protection of trademarks is performed on the basis of the Madrid Agreement for the International Registration of Trademarks (“Official Gazette SFRY – International Treaties no 2/74) of the Protocol relating to the Madrid Agreement  (“Official Gazette SFRY – International Treaties” no. 2/98) and the Regulations for its implementation.

Trademark registered on the basis of the Madrid Agreement and Madrid Protocol enjoys the same protection as if it had been registered directly in the office of the designated country.

Protection procedure

Country of origin
Country of origin is that country in whose office you wish to protect internationally your trademark or where you have filed national application or registered the national trademark.

Designated country
Designated country is the chosen country where you wish to register your trademark.

Conditions for the international registration of trademarks
In order to be able to file a request for the international registration of trademark, it is necessary to already have the national trademark registered and if that is not the case, it is necessary to file along with the filing of request for the international registration of trademarks or before that, the domestic trademark application. The contents of the request for the international registration of trademark must correspond to the contents of the domestic trademark application, which means that both applications must have the same applicant, identical sign and the same (or more narrow) list of goods and services.

Who can file request for the international registration of trademarks?
The right to file this request belongs to the citizens of the Republic of Serbia, persons that have residence on the territory of the Republic of Serbia, as well as legal persons who have serious and real industrial or commercial enterprise on the territory of the Republic of Serbia.

International priority right
If the International Bureau receives your international application in the term of 6 months from the filing date of the domestic trademark application, the international trademark shall have priority date of the domestic trademark application (article 4 of the Paris Convention).

In which countries can you realize protection?
Here you can look at the list of the countries and international organizations where you can realize international protection.

Note:

  • Protection can not be requested separately for Belgium, Holland and Luxembourg – but only for all three countries together (Benelux)
  • African Organization for Intellectual Property (OAPI) includes: Benin, Burkina Faso, Cameroon, Central African Republic, Chad, the Comoros, the Congo, Cote d`Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, the Niger, Senegal, Togo.

Filing a request
Protection procedure is initiated by filing a request for the international registration of trademark (form  MŽ-1) at the Intellectual Property Office of the Republic of Serbia, Kneginje Ljubice 5, 11000 Belgrade – by post, electronically or directly in the IPO registry office.

For every trademark, separate request is filed in two copies.

Attachments with the request

  • Neatly composed and classified List of goods and services in French language (if the list can not be placed in the appropriate place in the request);
  • Power of attorney, if the request is filed through the agent;
  • Proof of payment of the Republic Administrative Fee.

The image of the sign for which request for the international registration of trademark is filed must be completely identical to the image of the sign which is the subject matter of the national application for the grant of trademark or which is protected by a trademark.

Goods and services to which the request for the international registration of trademark refers must be identical to goods and services from the national application or registration. The list of goods and services for which the international application for trademark is filed can be narrower, but can not be broader than the list of goods and services from the national application of trademark, or the nationally registered trademark.

Course of the procedure
After filing the request for the international registration of trademark, the Office first examines if the request complies with the formal requirements and if it contains all the necessary data. If the request does not comply with the formal requirements, the Office shall invite the applicant in writing to correct it in the prescribed time limit. If the applicant does not do so, the Office shall reject the application by a decision. If the request is correct, the Office shall invite the applicant by a Conclusion, to pay the fee in the prescribed time limit for the international registration of trademark and to send the proof on the realized payment (swift).

When the person filing the request forwards proof on the payment, the Office shall forward to the World Intellectual Property Organization (WIPO) an application for the international registration of trademark.

If the person filing the request in the prescribed time limit does not furnish the proof of payment, it shall be considered that he has abandoned the request and the Office shall pass a decision on the termination of the procedure.

The person filing the request can, at any moment, give up on it, in total or only for some goods or services.

Opposition
Term for filing opposition for the international registration of trademarks where the Republic of Serbia is one of the designated countries, begins with the beginning of the first day of the month following the month mentioned on the Official Gazette of the World Intellectual Property Organization International Bureau where that international registration has been published.

If formally correct opposition has been filed, the competent body forwards to the International Bureau of the World Intellectual Property Organization information about the temporary refusal of protection.

Date of the International Registration of Trademark
International registration accepts as the date of registration, the date on which the application for the grant of the national trademark has been accepted in the Office of the country of origin, providing that the request for the international registration of trademark is accepted in the International Bureau in the term of two months from the date of reception in the national Office in the country of origin. If the request for the international registration of trademark has not been received in the International Bureau in the mentioned term, the international registration shall have the date of registration corresponding to the date when it has been received in the International Bureau.

Request for the subsequent designation
After the international registration, the holder of the international trademark can file a request for the subsequent designation (form MŽ-2), for those countries for which the trademark has not been registered. Request for subsequent designation can refer to all goods and services for which the sign has been registered, or only for some part of goods or services.

With the request for subsequent designation, the republic administrative fee is paid.

Effect of the international registration in the mentioned countries
Entry of trademark in the International Register does not mean that your trademark is automatically granted in all countries that have been designated in the request for the international registration of trademarks. As a matter of fact, after the entry of trademark in the International Register, the International Bureau forwards information about the international registration to the designated countries, and after that the mentioned trademark enters in the phase of the national examination of the fulfillment of the substantive conditions for protection. That means that the national office of each country mentioned in the request treats the international registration as an application which is subject to the examination to decide whether it fulfills the conditions for the grant of trademark prescribed by the legislation of that country.

In the certain term (12-18 months) from the date of notification /registration of trademark in the International Register – Madrid Monitor, the office of every country designated in the request shall inform you if the sign is protected or refused on the territory of that country. In other words, registration date (Date of the registration) does not represent the final registration of trademark but the beginning of the previously mentioned term in which it shall be decided if the trademark has finally been registered. If you get information that your application has been refused in the designated country, you should carefully read the document you received in order to understand how and in what term to answer to the office in the designated country. In this situation it is advisable to get an agent (empowered lawyer), and in some countries it is an obligation to engage the local lawyer (representative).

If the mentioned period of 12-18 months has expired, and you have not obtained information that trademark has been refused in that particular country (countries) of designation that means that the trademark has been registered for all goods and services for which you asked protection. Status of the international registration in each designated country can be seen in international database Madrid Monitor.

Duration of validity of international trademark
Trademark is internationally registered for the period of 10 years and the registration can be renewed for an unlimited number of times.

When the international application has been filed on the basis of the domestic trademark application (and not on the basis of the registered trademark), international trademark registered in this way remains connected to the legal destiny of the national application or trademark registration in the term of five years from the date of the international registration. In other words, if the domestic trademark application is refused partially or completely, the same destiny shall apply to the international trademark, which shall be deleted from the international register in total, or its duration shall be limited in a way in which the domestic application has been terminated.

How to prolong the duration of validity of the international trademark
Extension of validity of the international trademark is an action that you, as the holder of trademark, must do independently without the interference of the Intellectual Property Office.

However, six months before the expiry of the ten years period of validity of protection, the International Bureau shall send you an information (and also to your representative, if you have one) reminding you about the date of expiry of the validity of the mentioned trademark. This information has informal character, which means that if you do not receive it for any reason, that can not be the excuse for not paying the maintenance fee.

If the fee for the extension of duration of the international trademark is not paid until the date of the expiry of registration, it can be paid in the additional term of six months from the date of the expiry of registration but in that case, the maintenance fee shall be increased for a certain amount.

The extension of validity of the international trademark is performed electronically or in paper form (Form ММ11), on the website of the World Intellectual Property Organization where all information on how to manage your international registration are available – Renewal.

Entry of changes in the International Register
After the entry of trademark in the International Register, at the request of the holder of trademark, it is possible to enter all changes referring to the trademark into the mentioned Register: change of name and/or  address of the holder of trademark; transfer of the ownership of trademark; changes in the list of goods and services; entry of license; entry of the changes of license; delete of the license; entry of the limitation of right to dispose of the trademark as well as the renouncing of protection.

For the entry of these changes in the International Register, appropriate fees are paid in the Swiss francs (CHF) directly to the account of the World Intellectual Property Organization (WIPO).

What can happen with the international trademark after the registration?
After the registration, as well as in the cases of the nationally registered trademark, it is possible that the international trademark:

  • Is no longer valid after the expiry of term lasting for 10 years from the filing date if its validity is not maintained;
  • Is no longer valid because it is renounced by the holder of trademark on the basis of the court decision or if the legal person ceased to exist, or if the natural person died who is the holder of trademark and the trademark has not been transferred to the legal heirs of that person;
  • Is announced null and void;
  • Stops being valid due to non-utilization or for other reasons.

Fees

In the procedure of the international registration of trademark, the payment of the necessary fees is conducted in two phases:

а) on the occasion of filing the request for the international registration of trademarks, the republic administrative fee is paid  for the filing of this request;

b) if the request for the international registration of trademarks is complied with the formal requirements, the Office shall invite the applicant to pay the fee for the international registration of trademarks. The amount of this fee depends on the appearance of the sign, kind of trademark, number of clases for which the trademark has been applied for and the countries in which we wish to get protection. The fee is paid in Swiss francs (CHF), directly to the account of the World Intellectual Property Organization (WIPO) and the proof of payment (Swift) is forwarded to the Intellectual Property Office of the Republic of Serbia. (IPO RS).

If you wish to calculate yourself how much it would cost you to register trademark internationally, it is necessaty to mark in the Calculator of Fees the country (or countries) in which you wish to protect your sign; under Office of origin you should denote that it concerns the Republic of Serbia (RS), and to mention the mumber of clases to which the sign refers, and if necessary to check the appropriate fields  if it concerns the trademark in colors, collective or warranty trademark.

CALCULATOR OF THE INTERNATIONAL FEE

https://madrid.wipo.int/feecalcapp/

https://www.wipo.int/madrid/feecalc/FirstStep

NOTE: In the case of negative outcome of the procedure or in the case of abandoning of the request as filed, the return of the paid fees is not possible.

 

Important information about the frauds for the payment of fees for the registration and the extension of validity of the international trademark

Very often the clients address us to claim that they received the invitation to pay fees for the registration  and/or extension of duration of the international trademark and entry in the register of unauthorized agencies and organizations.

With regard to that, WE WARN applicants and agents not to perform payment of certain amounts of money as ordered by these unauthorized services, agencies and organizations.  It concerns organizations not authorized for registration, maintenance of rights or entry of rights in the database of the World Intellectual Property Organization (WIPO), European Union Intellectual Property Office (EUIPO) and the Intellectual Property Office of the Republic of Serbia (RS IPO).

More information and the list of these unauthorized organizations can be found on the website of the World Intellectual Property Organization (WIPO), on the link: https://www.wipo.int/madrid/en/fees/invoices.html and the European Union Intellectual Property Office (EUIPO), on the link: https://euipo.europa.eu/ohimportal/en/misleading-invoices.

ZIS

Search of the internationally registered trademarks

Data about the trademarks that are internationally registered for the territory of the Republic of Serbia, as well as those that are valid on the territories of other member states of the Madrid Union, or that are in the examination procedure, as well as those that are expired, are available by on-line database called Madrid Monitor held by the International Bureau of the World Intellectual Property Organization (WIPO). Madrid Monitor is data base fee of charge and available to everybody with no limitations.

Madrid Monitor

Laws and regulations

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Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

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Madrid Agreement on the International Registration of Trademarks

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