May 20, 2020 at 11:11 am
Q&A I – Ex-Yu: Basics on TM protection protocol
Each month we answer 3-5 questions our clients most often have and share it in our Q&A series.
Q: How long does it take on average from filing to registration of a TM application?
A: This varies greatly depending on the jurisdiction, the slowest ones are Bosnia, Kosovo, Macedonia and Montenegro, taking up to 3-4 years in a smooth process, whereas Serbia, Croatia, Slovenia and Albania take about 2 years at the most.
Q: Is there a multiclass system in place?
A: Yes – in all 8 jurisdictions trade mark applications can be filed in as many classes as the client wishes.
However, the client should always have in mind their near future IP strategy – especially licencing and assignment plans and file applications accordingly in separate classes or all together if licencing and/or assignments are not of their concern.
Q: Are disclaimers accepted?
A: Yes – 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 IPOs 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.
Q: Are series TM accepted?(those which resemble each other and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark)
A: In most cases yes. In Serbia, however it is not possible to own identical trade marks, and although Serbia has now also switched to an opposition based model it kept the right for the IPO to ex-officio reject applications based on relative grounds, too. So this rule will not be changing any time soon.