September 14, 2022
In most jurisdictions where new applications can be opposed, Letters of Consent cannot come into play, by default – filing of the opposition shows that the owner of the previous IP right does not believe the two can co-exist and that their rights are being infringed upon by the owner of the later trade mark application.
In Serbia, TM Law, which only changed in February 2020 to open way to oppositions – combines the previous approach of ex officio examination for all grounds for refusal with the opportunity for oppositions.
This means that all applications are still being examined by the IPO ex officio for absolute and relative grounds for refusal and only then published and opposition proceedings made possible.
When the IPO cites relative grounds as an obstacle to registration, by the way of an Official Action, it opens the door to other potential solutions – such as motion for cancellation due to non-use or submitting Letter/s of consent.
The process of obtaining LoC can be undertaken by the trade mark applicant, or done through a local lawyer, as they are best to advise on the contents , form or translation requirements (e.g. Letters of Consent should always be provided on company letterhead and supplied with company seal/stamp).
If strictly consulting the word of Law, LoCs should be 100% effective.
In reality, Serbian IPO’s practice lands much more weight to the principle of consumer protection by not allowing highly similar marks on the market, to avoid potential confusion, even if it does not bother their owners.
(The same approach is taken with identical marks – identical TMs cannot co-exist, even if the owner is the same entity or part of the same corporate structure. But this approach is underpinned by a slightly different rationale.)
This is a complex subject matter, consumer protection is important and should always be considered, but should it always be prioritised? Especially taking into consideration that the Law on trade marks, itself, does not require such a high threshold, IP owners are in agreement and it is the IPO going against the will of the IP owners in favour of consumers.
Minimizing the confusion on the market is in IP owner’s highest interest so the product or service they provide reaches the intended user, this is at the core of their business–thus, making their judgement on potentiality of market confusion highly rigorous.
Still, for the time being, it is left up to Serbian’s IPO to take care of delicate balance between amicable TM co-existence and potentiality of market confusion.