Trademarks

A trademark is a legally protected sign by which a natural and legal entity marks their goods and services in trade, so that consumers can distinguish them from identical or similar goods and services offered on the market by another natural or legal entity.Here are some examples of signs:

Verbal sign
APPLE and DUKAT

Words written in special typeface
    

Graphical signs
   

A combination of words and graphics
     

Slogans
     

Pesronal names
WILL SMITH ANTONIO ANTONIO BANDERAS

Color combination

Musical sign

A trademark can protect also a three-dimensional sign that represents the shape of a body.
The graphic representation of a three-dimensional sign must be such that on the basis of it can be concluded what shape it is. The appearance of the sign can be presented in the form of a graphic representation or a photograph. The appearance of the sign must clearly show the details from which it can be seen that it is a three-dimensional sign.

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Individual trademark is legally protected sign used in trade by its holder or owner of trademark. Holder of individual trademark is natural or legal person in whose name the trademark has been registered in the Intellectual Property Office. Collective trademark is a trademark filed by a legal person, representing certain form of association of producers or providers of services that have the right to be used by the subjects that are members of that association, under conditions prescribed by the law. Warranty trademark is used by companies, under the supervision of the holder of trademark, and in trade it is serves as a guarantee of quality, material, and methods of production of goods or providing the services, correctness or other common characteristics of goods or services of the certified business entities in relation to non-certified goods or services.

Legal protection of a sign marking goods and services in the trade is not a legal obligation, but a decision about its legal protection left at the free will of the applicant. Legal subject which uses its sign in trade, shall not suffer any legal sanctions for not protecting it by a sign. However, legal protection of a sign by a trademark is always welcome, because it offers numerous benefits for its owner, like the following:

а) exclusive right of the owner to use trademark to mark his goods and services in the channels of commerce on the territory of the country in which protection has been granted;

b) exclusive right of the owner to forbid unauthorized use of the same or similar sign for marking the same or similar goods or services in the channels of commerce on the territory of the country where the protection has been granted;

c) easy proving before the court or some other government body of having property over the trademark (on the basis of the decision on the grant of trademark, trademark certificate, or some other document issued by the Intellectual Property Office);

d) trademark is a significant tool for the exclusivity of the owner of trademark, future investments, financial profit from the licensing, franchising and transfer of rights…

The applicant for a trademark may be both, a natural person/s and a legal entity engaged in the trade of goods and provision of services. Proof of economic activity in the application for trademark recognition is not required.

The Law on Business Entities defines the term entrepreneurs and regulates issues related to it. An entrepreneur is a natural person who is registered and who, in order to make a profit, and performs all activities permitted by law, including artistic and old crafts and domestic handicrafts. Having in mind the possibility of termination of performing a certain activity, for the sake of continuity of the rights of the trademark holder, it is more convenient in that case to submit an application for recognition of the trademark as a natural person.

If the trademark applicant is a citizen of the Republic of Serbia or has a business seat in the Republic of Serbia – in that case it is not required to have a representative (attorney). On the other hand, if the applicant wants the persons who are professionally engaged in representation to conduct the procedure instead of him, he can submit application through the representative. Such an obligation exists for foreign natural or legal persons who do not have a permanent or temporary residence in the territory of the Republic of Serbia. They must hire a representatives to act before the Office, and who are registered in the Register of Representatives kept by the Office or another domestic lawyer.

If there is a change of name, address or transfer of rights during the trademark registration procedure or after registration, the applicant or trademark holder should submit to the Office an appropriate request for registration of the change.

3. A) Request for registration of change of name and/or address – Form Ž-3.

Based on the submitted request, changes are made in the public E-register of trademarks during the trademark registration procedure in communication with the applicant or by sending the invitations for payment of fees for extending the validity of the trademark. If e.g. the name of the holder is not the same or the address has been changed, it is possible that the applicant/holder will not receive the notes and respond within a certain period of time. The consequences can be e.g. rejection of the trademark application or termination of the trademark.

In addition to the duly completed request, the applicant should submit proof of payment of the fee, as well as a valid power of attorney, if the application is submitted through a representative.

1. B) Request for registration of transfer of trademark or right from trademark application – Form Ž-5

Along with the duly completed Request, it is necessary to submit proof of the legal basis of the transfer, proof of payment of the fee and power of attorney (if the request is submitted through a representative).

Proof of the legal basis will depend on the manner, in which the trademark was transferred, i.e. the rights from the application. When the transfer of rights is a consequence of the transfer agreement, the original transfer agreement or the original excerpt shall accompany the request, or the original transfer statement signed by the parties, or a certified copy of these documents.

If the transfer of rights occurred on the basis of a law or a court or administrative decision, the original or a certified copy of the court decision or other document confirming the change shall be submitted with the request.

If the said documents are in a foreign language, their translation certified by a court interpreter shall be submitted.

That obligation exists. The trademark owner will not be held criminally or misdemeanor liable if he does not use his trademark in trade, but he thus risks losing the acquired right. If the trademark holder does not use his trademark in trade within five or more years from the date of trademark registration, or if five or more years have passed since the last trademark use, then any interested person may request the Office to make a decision on termination of such trademark. The Office will inform the trademark holder about the submitted request and give him the opportunity to prove the opposite, that is, that he uses his trademark. On the basis of all available evidence, the Office will make a decision on whether to maintain the disputed trademark in force or to make a decision on its termination.

Use of a trademark includes:

а) affixing the protected mark to the goods, the packaging for the goods or labeling instruments (labels, stickers, bottle stoppers, and the like);

b) offering of goods, their entry into circulation or storage for such purposes, or supply of services under the protected mark;

c) import, export or transit of the goods under the protected mark;

d) using the protected mark in business documentation or in advertisements.

What is not being considered as a use of a trademark:

а) advertising the registered trademark without possibility of supplying the goods and/or using the services comprised within;

b) payment of taxes for extending the validity of the trademark or conclusion of contracts on transfer of rights, license, pledge, franchises or similar.

The choice of sign you want to protect is very important bearing in mind the conditions for protection prescribed by law. Please note that the appearance of the mark cannot be significantly changed after the trademark application has been filed. A significant change in a sign is considered to be any change that changes the distinctive character of the sign. The change of the distinctive element of the sign always represents an important change of the sign, because it is the element in the sign that has the function of distinguishing goods, ie services.

The choice of sign you want to protect is very important bearing in mind the conditions for protection prescribed by law. Please note that the appearance of the mark cannot be significantly changed after the trademark application has been filed. A significant change in a sign is considered to be any change that changes the distinctive character of the sign. The change of the distinctive element of the sign always represents an important change of the sign, because it is the element in the sign that has the function of distinguishing goods, ie services.

Before applying for a trademark, it is advisable to check whether the mark you want to protect (or similar) is already protected for the territory of the Republic of Serbia, for the same or similar goods or services. You can search yourself, using the following trademark databases:

E-register of trademarks (database of national trademarks)
Madrid Monitor database (database of international trademarks, chose the Republic of Serbia as designation country)

Please note that self-search is recommended as an informative activity, while to determine the potential conflict between the sign that is the subject of the application and protected trademarks, it is recommended to submit a Request for a trademark search to the Office, with proof of payment of the appropriate fee. If applicant requesting the trademark search is foreign natural or legal entity, he must submit the request by the representative.

The search report of the Office provides information on registered or applied for trademarks, for which a certain degree of similarity has been determined with the sign for which the search is requested. Irrespective of the report of the Office, the party is free to decide whether, in the determined state in the registers, it will submit the trademark application. Also, the Office is not obliged to follow the determined state expressed in the trademark search procedure in the procedure for protection of a trademark, but it can deviate from it, although that very rarely happens.

Registration of the name of a business entity does not imply automatic protection of that name with a trademark.

The Law on Business Entities is different from the Trademark Law. Registration with the Business Registers Agency does not mean that the name will be able to be protected by a trademark in proceedings before the Intellectual Property Office. The name of a business entity may not be protected by a trademark because, for example:

– is not distinctive, that is not suitable for differentiation of goods or services in trade;
– it is a descriptive (means the type, quality, quantity, purpose or other characteristics of goods or services);
– exclusively indicates geographical origin;
– already enjoys trademark protection.

In the same way, a trademark consisting of words may not be able to be registered as a company name before the Business Registers Agency.

When submitting trademark application, along with the completed application form, the List of goods and services is also submitted, both in two copies. Find the appropriate class of the International Classification of Goods and Services to which the goods and/or services you wish to mark belong. A proper list of goods and services must be compiled in the Serbian language. It is compiled by first stating the class number, and then the goods or services covered by that class. You can use the Madrid Goods and Service Manager application, which is available in Serbian, to compile a list of goods and services in an easier and faster way.

The list of goods and services is very important, since it cannot be subsequently supplemented after the submission of the application, but it can always be narrowed. The refinement will exist in a situation when the list of goods relating to a wider category of goods is limited to those relating to individual goods in that category. For example, clothing (as a broader category) can be later specified on skirts, trousers, shirts.

After the registration, the holder of the trademark will have the exclusive right to mark with the trademark only the goods and services for which the trademark is registered. Therefore, it is necessary to specify the titles of the goods and services to which the mark relates.

LIST OF GOODS AND SERVICES
Class 29: dried vegetables, soup preparations;
Class 30: Spices, popcorn, sauces and sauces as spices; celery, a mixture of various spices, breadcrumbs, rice;
Class 31: raw beans.

а) Proof on the existence of the international priority right
b) Proof on the existence of the exhibition at fairs priority right
c) Power of attorney
d) General act on the collective trademark and warranty trademark

а) Proof on the existence of the international priority right
Proof on the existence of the international priority right makes constituent part of the application for the grant of trademark only when the applicant in the application claims such priority.

It has been emphasized above that the priority right is obtained on the date of filing the correct application in the Intellectual Property Office, and that rule has also exceptions. Under certain conditions, the applicant may be granted so called international priority right. In order for the international priority right to be granted, it is necessary:

• That the applicant is the citizen of any of the Paris Union countries or signatory states of the Paris Convention;
• That the application filed in the Intellectual Property Office refers to the identical sign just like the application signed in the Paris Union country;
• That from the moment of filing the application in the Paris Union country, till the moment of filing the identical application in the Intellectual Property Office, not more than six months passed; and that the applicant claims the international priority right in his application for the grant of trademark by stating in the request for the grant of trademark the date of filing the application abroad, number of the application and country where it has been filed.
• That in the term of three months at the most, from the date of filing the application in the Intellectual Property Office, furnishes sealed copy of the application filed in the Paris Union country (the certification of the transcription is performed by the competent body of the Union where the application has been filed) and the certified translation of that application (the certification of that translation is performed by the authorized court interpreter in our country).

b) Proof of the existence of the exhibition priority right

Proof of the existence of the exhibition priority right is the constituent part of the application for the grant of trademark only when the applicant claims such priority in his application

The applicant who in the term of three months at the most, before filing the application in the Intellectual Property Office used a certain sign to mark his goods or services  at the exhibition having international character held in the Republic of Serbia or some other member country of the Paris Union can ask in the application the grant of priority right from the date of the first use of that sign.

Proof about the existence of the exhibition priority is a certificate issued by the competent body of the Paris Union confirming that the exhibition had international character. On that occasion, it must be clearly stated in the certificate the data about the kind of exhibition, place of holding the exhibition,  date of opening and closing and in particular the date of the first use of the sign for which protection is asked.
If the fair has been held in the Republic of Serbia, the certificate is issued by the CHAMBER OF COMMERCE  of the Republic of Serbia.

c) Power of Attorney
Power of attorney is the constituent part of the application for the grant of trademark only when the applicant files his application through the lawyer (representative). Foreign persons that have no residence of business seat in the Republic of Serbia, must engage a representative from the List of Representatives or some other Serbian lawyer.

Power of attorney is a contract concluded between the applicant and his lawyer, on the basis of which the applicant empowers the lawyer to file an application for the grant of trademark in his name and for his account. Apart from the declaration on the given power of attorney, it  must contain the designation of the number of file  (Ж number) to which the power of attorney refers, that must be signed by the lawyer and the person filing the application and it must be furnished in the original. The copy of the power of attorney shall not be accepted in the IPO to start  the procedure. However, the copy of the power of attorney can be taken into consideration in two cases:

• If the applicant has more applications for the grant of trademark and if he is represented by the same lawyer in all those cases, it is enough to have in one of those applications the furnished original of the power of attorney, while in other applications copy of the power of attorney is enough. In each copy of the power of attorney it must be clearly designated where the original of the power of attorney has been furnished. It is done by designating Ж number of the file where the original copy of the power of attorney has been filed.
• If the applicant issues to the lawyer the general power of attorney empowering him to represent him in all tasks relating to the intellectual property protection, then in the particular application for the grant of trademark a copy of such power of attorney can be furnished. General power of attorney must be deposited in the Intellectual Property Office, and on the copy of such power of attorney, in the particular application for the grant of trademark, it must be clearly stated under which number has such deposition been done.

d) General act on the collective trademark and warranty trademark

General act on the collective trademark or warranty trademark represents constituent part of the application for the grant of trademark when the applicant designates in the request for the grant of trademark that he wishes that sign to be protected by collective trademark or warranty trademark. More detailed information what does the collective trademark and warranty trademark contain can be found in the article 16 of the Trademark Law and article 4 of the Regulation on the contents of the Trademark Register, contents of the request, etc.

It is a rule that the applications are examined in turn which is determined by their filing date in the Intellectual Property Office. However, some applications can be examined urgently, out of turn, but only if certain legal conditions have been fulfilled for that:

–  in the case of the legal suit or initiated inspection supervision or procedure at the Customs, at the request of the Court or the competent body of the market inspection, or the Customs body;

–  if it is in line with other legislation that it is necessary to perform urgent registration for example for the trademark applications relating to medicaments, pharmaceutical preparations, and means for the protection of plants (pesticides and fertilizers).

For the request to examine the application out of turn according to the urgent procedure, the fee is paid.

There is no formal procedure for brand protection. Branding is a process in which the overall visual, emotional, rational and cultural “image” of a company is created. Brand associates customers with that company or its product (service), ie with the value that it promotes through its brand. Given that significant resources are invested in the creation of the brand (marketing, product development, etc.), in order for the company to ensure that someone else does not use the same or similar sign by which it is recognizable, it is usually necessary to protect the sign with a trademark, for goods and services of that company.

Logo is used in everyday speech as a word that refers to a sign that represents a graphic symbol that marks a product or service, or represents a company sign. A logo, as a sign that may consist of letters, numbers, words, drawings, color combinations or the above, or as a sign that represents a three-dimensional shape, may be subject to trademark protection.

By protecting one sign (logo) with a trademark, protection (exclusive right of use) is provided only on that sign. If you want to have the exclusive right to all logos, you can initiate the protection procedure by filing several trademark applications individually, one logo – one trademark application. If you want to have the exclusive right to only one logo and to build the distinction of your entire business (corporate logo) only on it, you can submit only one trademark application. If you use one logo in several different colors, the exclusive right applies only to the one that is protected by the trademark and that right does not transfer to variations in other colors.

It is up to you to decide for which logos (signs) you will apply for trademark protection, keeping in mind what you want to achieve, as well as the costs of protection.

The mark is protected by a trademark as represented in the application. The scope of protection does not include translation into any language other than that used on the sign. The issue of trademark use and possible similarity will be considered according to the circumstances of the specific case.

If you want to protect the magazine in terms of its content, it is important to note that this issue falls under the field of copyright. Namely, copyright is created at the moment of creation of the copyright work, provided that it is an original work and that it is expressed in some form. Therefore, there is no procedure for formal registration of a written work (eg a journal, or articles by different authors in a journal), but only the work can be deposited. You can find out more about this in the Copyright and Related Rights section.

On the other hand, if you want to protect the name of the magazine, logo or other sign that marks the magazine or publishing services, then such a sign can be protected by a trademark, if all the legal conditions are met. You can find the application and instructions for trademark recognition in the Trademarks menu.

Any change in the essential elements of the sign (color, font, words, and arrangement of elements…) requires the submission of a new application for the recognition of a trademark, if one wishes to acquire the exclusive right to such a changed mark.

The ® mark is not an obligatory part of a registered trademark, but it serves to emphasize the fact in trade that a certain sign (word, logo) is registered as a trademark of a certain person. The use of that sign is not prescribed by the laws of the Republic of Serbia.

This mark may be used by the holder in trade to indicate that the mark has been registered as a trademark, but the mere display of the mark is not proof that the mark has also been registered. Since it is a universal sign, regardless of which country or countries the trademark registration is valid, it is possible that a specific trademark is not valid in the territory of the Republic of Serbia, so it is always necessary to check where it is protected and its validity.

A sign containing the state or other public coat of arms, flag or symbol, name or abbreviation of the name of a country or international organization, as well as their imitation may be protected by a trademark only with the approval of the competent authority of the country or organization.

The name of your Internet domain may also be subject to trademark protection, if it meets the conditions for protection provided by the Trademark Law. Examples:

www.21dan.com

The name of the event, logo or other sign marking the event, etc., can be protected by a trademark if the sign meets the condition for protection prescribed by the Trademark law.

In addition, the subject of protection may be e.g. original written work, original musical composition composed only for the occasion, and other original works that represent the content of the event. The copyright protection of such works arises from the creation of the work itself, if that work fulfills the condition of originality and if it is expressed in a certain form. You can find more about copyright in the section Copyright and related rights.

The Trademark Law stipulates that trademark may not be protected for a mark, which, by its appearance or content, infringes copyright or other industrial property rights. It is advisable to conclude the order contract for author’s work (logo), which would define the mutual rights and obligations between the marketing agency and the client.

Such a rule, expressed as a percentage, does not exist. To protect a sign (mark) with a trademark, it is necessary that the sign differs from previously applied for or registered trademarks for the same or similar goods and services. Signs are compared visually, auditory, conceptually (by word meaning, arrangement of graphic and verbal elements, arrangement of colors, etc.)

Parallel import usually occurs if a person legally imports goods procured outside the territory of the Republic of Serbia, e.g. from the right holder himself or its distributor.

The trademark holder may not prohibit the further trade of goods marked with his trademark, which have been placed anywhere in the world by the trademark holder or a person authorized by him, unless there is a justified reason for the trademark holder to oppose further trade of the trademarked goods, especially if there is a defect or other significant change in the condition of the goods after its first placing on the market.