Draft Trademark Act introduces opposition system as key innovation

Trademark protection in Serbia is currently regulated by the Trademark Act ("Official Gazette of the Republic of Serbia", nos. 104/09 and 10/13). Recognizing the need to further adjust and harmonize Serbian legislation with the European Union IP legal framework, as well as to remedy the identified shortcomings of the existing Trademark Act, the legislator prepared the Draft of the new Trademark Act.

Opposition system introduced

A key innovation envisaged by the Draft Law concerns the introduction of the trademark opposition system, which is to replace the current ex officio examination of the relative grounds for refusal. This essential change brings Serbian legislation closer to what is already a well-established standard for most neighbouring and European countries and the community trademarks (by virtue of Council Regulation (EC) no. 207/2009.

Under the Draft Law, the Intellectual Property Office will conduct formal examinations on absolute grounds only, while the substantive examination on relative grounds will rest within the discretion and attentiveness of rightholders. In accordance with the proposed change, the holder of an earlier trademark, a well-known trademark, licensee or the holder of an earlier right to a name or image, copyright or industrial property right, will be able to file opposition based on relative grounds for refusal within three months from the application publication date.

More effective court protection

Further changes envisaged under the Draft Law come as a consequence of the obligation to comply with Directive 2008/95/EC on the approximation of the laws of the Member States related to trademarks.

The aim is to establish a more efficient trademark protection system, eliminate the identified ambiguities and facilitate the application of civil procedure law provisions in order to allow a more effective protection in infringement cases. To briefly illustrate - the proposed changes include more precise definition of possible claims, as well as clearer and more systematic provisions on interim measures and effective measures on securing evidence.

Crucial revision of the statute of limitation

Another key amendment concerns the statute of limitation for bringing a claim against trademark infringement under the civil law track. The earlier solution was defective and not viable, as it prescribed that the statutory deadline for bringing an action is 3 years from the moment the rightholder became aware of the infringement and the infringer (subjective deadline) and not longer than 5 years from the date the infringement was firstly done (objective deadline).

Based on such definition, rightholders were often faced with inability to prevent and oppose ongoing infringements if the five-year deadline has passed (even if the rightholder had no knowledge of the infringement). The Draft Law seeks to remedy this major flow by removing the word "first" from the statute of limitations definition, so that a claim for ongoing infringements cannot become outdated.

Adoption of the Draft Law: When?

Although the Draft Law has been up for public discussion since December 3, 2015 and it was expected to enter the parliamentary procedure some time in January 2016, the current status remains unknown. The adoption procedure seems to have been postponed for now and the Draft Law is still open for comments and suggestions. It is currently expected that the Intellectual Property Office will host at least one more roundtable for IP experts before producing the final draft. The adoption of the Draft Law may, therefore, be expected by mid-year.

Authors:
Andrea Radonjanin, lawyer and Petar Luka Barisic, associate
Moravcevic Vojnovic & Partner Law Firm

Moravčević, Vojnović I Partneri OAD Beograd

Zavod za intelektualnu svojinu Republike Srbije

Trademark Act

Opposition System

objection system

trademark protection

EC 2008 95 Directive

trademark registration