November 23, 2020 at 1:58 pm
We have written before about the importance of re-evaluating your TM portfolio in Kosovo and creating strategy best suited for your business, given that TM trolls have been profiting from the socio-political position in the region and IP owner’s lethargy when actually using their IP, leaving many trade mark owners and their portfolios vulnerable to cancellation due to non-use.
Now, we would like to bring your attention to Montenegro – the situation there being much more civil and generally TM troll light.
Still, many of our clients, and we believe other trade mark owners, too, were rushed to re-register their IP rights in 2008, once Montenegrin IPO opened, but gave it little thought afterwards, most probably even renewing their rights but not necessarily using them.
This position leaves the owner with 2 problems:
1. Being unable to file oppositions against later applications
Potential opposition procedures against later rights enable the later right holder to demand proof of use – putting the client in the position of not being able to oppose new applications.
2. Little to no means of defence against blatant copying
Again, if there is no use in the market – someone applying for a highly similar or identical mark could not be stopped neither by the opposition (for the reason listed above), nor could be pursued for unfair competition, either.
Additionally, IPO and the national Courts are more inclined to stand behind the locals which often plays out badly for the foreign IP owner.
We are happy to offer more insight and IP audits in Montenegro (and Kosovo) as well as other jurisdictions and give you our guidance on the best course of action!