September 13, 2021
Tips on overcoming Provisional Refusals based on relative grounds in Republic of Serbia
Most jurisdictions our office covers (Albania, Bosnia, Croatia, Kosovo, Macedonia, Montenegro and Slovenia) are based on the straight forward 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, even after switching to the opposition system back in February 2020, continues to examine the new applications for relative grounds for refusal, as well.
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:
1. 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.
2. Terms for reply to the issued Provisional Refusal can be extended multiple times.
3. 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 highly effective.
4. 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 will be 100% effective.
This works only if the mark is susceptible to this motion (the term being 5 years from registration date or last known use) and is not being used on the market.
It is difficult to determine non-use, as it is always harder to prove a negative fact –but depending on the goods, a quick online search and visits to large marketplaces selling these type of goods, should give the owner a good picture of the situation on the market.
5. Of course, it is also possible to reply to the Provisional Refusal with argumentation and/or limitation of the list of goods and services.
6. 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 and services, but will rather reject whole classes even when only one or two points are identical/highly similar.
7. Our IPO rejects coexistence of identical marks – even when owned by the same entity.
This is often a point of confusion with our clients, as there is no real collision going on, however, this is the stance our IPO has taken, so if truly identical, no argumentation is possible and resolution is to withdraw one of the marks, or let the new application to be refused.
It is often suggested that the earlier mark should be sacrificed, as with the new registration a new cancellation due to non-use period starts and there is no actual time the mark is not protected in one way or another, so no other applications could cause an issue.
Chances of success and the best approach should be left to the experienced local agent to map out, as often multiple approaches are available.