New Serbian & Montenegrin Trademark Law effective January 1, 2005

Various revisions have been made to Serbian & Montenegrin Trademark Law, in accordance with TRIPS, European Community legislation (1993 and 1998 Regulations), and the WIPO joint resolution on well-known marks. These revisions are effective from January 1, 2005.

The most notable points, some of which clarify the old law, are as follows:

• Introduction of Certification trademarks, described as a form of Collective mark.

• The legal conditions required must be met at the grant of a trademark, not at the date of application.

• Parts of a trademark may be disclaimed.

• A trademark application or registration can be divided.

• Exhaustion of Rights is henceforth universal. The trademark owner can prevent exhaustion if it would harm its reputation in some manner.

• A company name does not infringe a trademark if this name was acquired in good faith and used before the trademark’s application.

• Famous marks must be registered to enjoy protection. To be famous, the mark must have a high reputation and be known to relevant members of the public.

• If an earlier rights holder tolerates a registration for five years, there is acquiescence (does not include well-known marks).

• In a cancellation action, the owner of the earlier right or its legal successor is obliged to prove that the trademark is in use. Cancellation for non-use takes effect on the date of last use (not on the date of the Decision).

• Use must be genuine use.

• Revocation on the grounds that a trademark has become generic takes effect at the time of the final Decision.

• If a trademark is filed in bad faith, the rightful owner can ask for the mark to be transferred into his/her name.

• Where an infringing mark infringes a well-known mark, it may be transferred into the name of the owner of the well-known trademark.

For further information about the new Law, please contact our Serbia & Montenegro representative.