June 26, 2024
Besides Kosovo, all jurisdictions we cover are members of the Madrid Protocol.
It is necessary to find a local agent
It is always important to reply to Provisional Refusals.
In Serbia, Serbian IPO can protest an IR 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.
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.
In Albania, if the Provisional Refusal cites that a part of the mark should have a disclaimer, if the applicant does not reply to the Refusal, the IPO will automatically apply it.
However, from our experience, if the applicant does not reply, the IPO is slow to send decision on grant to WIPO, often taking a year to do so.
Serbian 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.
The terms for reply & extensions are the following:
RS:
For provisional refusal based on absolute or relative grounds (issued by IPO): 6 months plus 3 months extension
For provisional refusal based on opposition: 2 months to file the POA and register as representatives in order to receive the opposition
HR:
For provisional refusal based on absolute grounds: 4 months (no extention of time)
For provisional refusal based on opposition: 4 months to file the POA and register as representatives in order to receive the opposition
BA:
For provisional refusal based on absolute grounds : 4 months (no extention of time)
For provisional refusal based on opposition: 4 months to file the POA and register as representatives in order to receive the opposition
ME:
For provisional refusal based on absolute grounds: 4 months (no extention of time)
For provisional refusal based on opposition: 4 months to file the POA and register as representatives in order to receive the opposition
SI:
For provisional refusal based on absolute grounds: 3 months + 3 months extension
For provisional refusal based on opposition: 3 months to file the reply (incuding submition of the POA) + 3 monts extention
AL:
For provisional refusal based on absolute grounds: 4 months (no extention of time)
For provisional refusal based on opposition: 2 months to file the POA and register as representatives in order to receive the opposition
MK:
For provisional refusal based on absolute grounds: 30 days + 30 days extention
For provisional refusal based on opposition: 60 days to file the reply (incuding submition of the POA)
