Most jurisdictions our office covers (Albania, Bosnia, Croatia, Kosovo, Macedonia, Montenegro and Slovenia) are based on the opposition system - new applications are examined on absolute grounds, then published, and open for 3rd party oppositions based on relative grounds.
This is true for national as well as IR applications with local designations.
However, only the Intellectual Property Office of Republic of Serbia, examines the new applications for relative grounds for refusal, as well.
Since February 2020, Republic of Serbia has also joined the opposition system, but has not changed the ex officio right of the IPO to examine the applications for relative grounds before publication, and in practice, they do this thoroughly.
This means that foreign TM owners are often met with Provisional Refusals based on relative grounds issued by our IPO.
Here are a few tips:
It is necessary to find a local agent - our IPO's website has a list and of course, word of mouth or googling will provide you a decent amount of IP specialists.
Terms for reply to the issued Provisional Refusal can be extended multiple times.
Since the previous applications/registrations presenting the obstacle to your mark being registered are cited by the IPO - possibility of obtaining a Letter of Consent is realistic.
Letters of Consent should always be provided on company letterhead and supplied with company seal/stamp. They are 100% effective.
Further, it is possible to request Cancellation due to non-use of the registrations presenting the obstacle to your mark being registered. If successful, this, too, will be 100% effective.
Of course, it is also possible to reply to the Provisional Refusal with argumentation and/or limitation of the list of goods and services.
Chances of success and best approach should be left to the experienced local agent.
It is always important to reply to Provisional Refusals.
At times foreign TM owners do not understand that the Serbian IPO will not itself go into comparison and limitation of list of goods in services, but will rather reject whole classes even when only one or two points are identical/highly similar.
It is local agent's work to overcome IPO's Refusal by limiting the list of goods and services whenever possible.
Disclaimers can sometimes be useful in overcoming Provisional Refusals, however, they cannot pertain to any part that would mislead the average consumer in regards to the goods/services quality or other attributes.
Hence, most often our clients face the IPO challenging them on the year of establishment, and this is a great example of one of the situations where the client cannot simply file a disclaimer for the quoted year.
