Trademark - Subject and conditions of trademark protection

A trademark is a right that protects a sign that serves to distinguish the goods or services of one natural or legal person from the same or similar goods or services of another natural or legal person.

The Law on Trademarks (“Official Gazette of the RS”, No. 6/2020) regulates the acquisition and protection of the right to a trademark in the sale of goods and services.

A trademark in the sense of the Law on Trademarks (“Official Gazette of the RS”, No. 6/2020) is considered to be a trademark that is internationally registered for the territory of the Republic of Serbia, based on the Madrid Agreement on the International Registration of Trademarks (from now on referred to as the Madrid Agreement), i.e. the Protocol to the Madrid Agreement on the International Registration of Trademarks (from now on: Madrid Protocol).

The provisions of the Law on Trademarks (“Official Gazette of the RS”, No. 6/2020) also apply to a trademark, which is internationally registered for the territory of the Republic of Serbia based on the Madrid Agreement, i.e. the Madrid Protocol, if specific issues are not regulated by the Madrid Agreement, i.e. the Madrid Protocol.

Types of trademarks

The mark can be individual, collective or guarantee mark.

A collective trademark marked as such in a trademark application is a trademark of a legal entity that represents a particular form of association of producers, that is, service providers, which have the right to be used by entities that are members of that association, under the conditions prescribed by the Law on Trademarks (“Official Gazette of the RS”, No. 6/2020).

The collective trademark distinguishes the goods or services of the members of the legal entity that is the bearer of the collective trademark from the same or similar goods or services of another natural or legal entity.

The user of a collective trademark has the right to use that trademark only in the manner provided by the general act on the collective trademark.

The guarantee mark marked as such in the trademark application distinguishes goods or services certified by the trademark holder from the same or similar goods, or services of another natural or legal person that are not permitted.

A guarantee mark used by several persons under the supervision of the mark holder serves as a guarantee of the quality, materials, method of production of goods or provision of services, correctness or other common characteristics of the goods or services protected by that mark.

The holder of the guarantee mark must allow the use of the guarantee mark to any person for goods or services with common characteristics prescribed by the general act on the guarantee mark.

Any natural or legal person can apply for the recognition of the guarantee mark, provided that he does not perform activities that include procuring goods or services of the type he approves as the bearer of the guarantee mark.

Signs that are not considered trademarks

In the Law on Trademarks (“Official Gazette of the RS”, No. 6/2020), a seal, stamp, sign, mark and trademark are not considered to be a trademark in accordance with the regulations governing objects made of precious metals.

Subject and terms of protection

Signs of which a trademark may consist

A sign protected by a trademark may consist of any signs, especially words, including personal names, drawings, letters, numbers, colours, three-dimensional shapes, the shape of goods or their packaging, or combinations of these signs or sounds, provided that:

that it is suitable for distinguishing in the circulation of goods, i.e. services of one natural or legal person, from goods, i.e. services of another natural or legal person and
It can be displayed in the Register of Trademarks in a way that enables the competent authorities and the public to clearly and precisely determine the subject of protection.

Absolute reasons for refusing protection

A sign cannot be protected by a trademark:

that does not meet the condition prescribed by the provisions of Article 4 of the Law on Trademarks (“Official Gazette of the RS”, No. 6/2020)
which is against public order or accepted moral principles
which, by its overall appearance, is not suitable for distinguishing goods or services in circulation
which consists exclusively of the shape or other characteristic determined by the nature of the goods or the shape or other characteristic of the goods necessary to obtain a certain technical result or of the shape or other characteristic that gives essential value to the goods
consisting exclusively of marks or data that can be used to indicate the type, quality, quantity, purpose, value, geographical origin, time of production of goods or provision of services, or other characteristics of goods or services
which consists exclusively of signs or data that have become common in everyday speech or in good trade practices for marking a certain type of goods or services
which, with its appearance or content, can mislead road users regarding e.g. type, quality or geographical origin of the goods or other characteristics of the goods or services
which contains official signs or stamps for quality control or guarantee or imitates them, except with the written approval of the competent authority
which does not meet the requirements for protection by applying Article 6ter of the Paris Convention on the Protection of Industrial Property, except with the approval of the competent authority
which contains or imitates the name, abbreviation of the name, national coat of arms, flag or other official symbol of the Republic of Serbia, except with the approval of the competent authority
which represents or imitates a national or religious symbol
which contains or consists of a designation of geographical origin that is valid on the territory of the Republic of Serbia and which refers to the same type of goods or services
which consists of a previously protected name of a plant variety or reproduces it in its essential elements and which refers to a plant variety of the same or similar plant species.

Sign:

which by its overall appearance is not suitable for distinguishing goods or services in circulation; which consists exclusively of marks or data that can be used in traffic to indicate the type, quality, quantity, purpose, value, geographical origin, time of production of goods or provision of services, or other characteristics of goods, i.e. services,
which consists exclusively of signs or data that have become common in everyday speech or in good trade practices for marking a specific type of goods, i.e. services and
which consists exclusively of signs or data that have become common in everyday speech or in good trade practices for marking a particular type of goods or services,

can be protected by a trademark if the applicant proves that through serious use, the sign has become eligible for distinction in the circulation of the goods or services to which it refers.

Relative reasons for refusing protection

A trademark can protect not even a sign:

which is identical to a previously registered trademark for the same type of goods or services
which is identical to a previously registered trademark of another person for a similar type of goods, i.e. services or equal to a previously registered trademark of another person for the same or similar kind of goods, i.e. services if there is a likelihood that confusion will arise in the relevant part of the public due to this identity, i.e. similarity, which also includes the probability of connecting that sign with a previously protected sign
which is identical or similar, for the same or similar type of goods or services, to the mark of another person that is known in the Republic of Serbia in the sense of Article 6bis of the Paris Convention on the Protection of Industrial Property
which, regardless of the goods or services to which it refers, is identical or similar to a previously protected trademark of another person, which is undoubtedly known to traffic participants in the Republic of Serbia as a sign of high reputation, if the use of such a sign would disloyally benefit from the acquired reputation of the famous trademark or harm its distinctive character, i.e. reputation
which by its appearance or content infringes the copyright or other industrial property rights.

A sign containing a person’s face or personal name can be protected only with that person’s written consent.

A sign containing the image or personal name of a deceased person can be protected only with the written consent of the dead’s parents, spouse and children.

A sign containing the image or personal name of a historical or other deceased notable people can be protected with the permission of the competent authority and the written consent of the spouse and relatives up to the third degree of consanguinity.

Special reasons for refusal of protection based on the objection

Based on an objection by a company registered in the register before the date of submission of the application for recognition of the trademark concerning which the complaint is submitted or before the priority date of that application, the trademark will not be registered if the name of the company or its essential part is identical or similar to the mark from the application, and the goods or services that are the subject of the activity of that company are identical or similar to those from the trademark application and are used in circulation unless the applicant for trademark recognition had a company with the same or similar name at the time of applying.

Based on the right holder’s objection, the sign for which the commercial representative submitted the application or the applicant’s attorney in his name cannot be protected with a trademark without his approval unless he justifies his action.

The principle of reciprocity

Foreign natural and legal persons concerning trademark protection in the Republic of Serbia enjoy the same rights as domestic natural and legal persons if this arises from international agreements or the principle of reciprocity. The existence of reciprocity is proved by the person who invokes reciprocity.