March 18, 2024
All jurisdictions allow for opposition proceedings from 2020, when Serbia included the institution of oppositions , but retained the right to examine the applications on relative grounds for refusal, before publication, after which oppositions can be filed
New TM applications are examined on absolute grounds by local IPOs, then published, and open for 3rd party oppositions based on relative grounds.
Term to file an opposition proceeding are – 3 months or 90 days (MK & ME) from publication.
In Bosnia, one of the grounds for absolute refusal is that the sign cannot be protected as a trade mark if it is identical to an earlier trade mark application/registration for the same goods or services
The IPO will present the opposition request to the owner of the newer right, who will also be able to put their argument in writing and finally the IPO will make a decision
Hearings are possible, but seldom held
In oppositions, most of the local IP laws explicitly predict (HR, RS, BA, ME, KS, SI) the right of the owner of the newer right to request proof of use on the market of the older right – this can greatly impact the outcome, because without proof of use (when requested) the opposition will be thrown out
As long as the opposition itself is filed according to the law, the IPOs will accept it if no reply is provided in the time frame the local law predicts (from 60 days to 3 months; non-extendable), rejecting the registration partly or as a whole, depending on the scope of the opposition (HR, RS, BA,ME KS, AL)
In Bosnia, if the opposition was filed unsuccessfully, the same reasons cannot constitute the basis for annulment later on – but new proof can be presented.
As the Serbian IPO can protest an application itself based on relative grounds – overcoming this can be somewhat different, as the other side is not the owner of the older right – so Letters of Consent and/or cancellation actions all come into play.
Also, the reply and subsequent Official Actions will be between the application owner and the IPO itself, the owner of the older right will not be informed or often even necessarily know about the whole situation.
It is possible to appeal the IPO’s Decision either before the Administrative Courts (RS, SI, HR, MK and ME) or before a Commission (KIM and BA); In Albania there is a 2 tier Commission process – firstly before the Opposition Division Commission and then before the Board of Appeal – both bodies are part of ALIPO.
