August 30, 2024
Conflict most often happens when there is an opposition filed against your IP right or the need to file one, Provisional Refusal issued or a motion for a cancellation action filed – due to non-use or for annulment.
Depending on the situation various tools can be used to secure your IP right – one can start with a cease & desist Letter, perhaps reach a co-existence agreement, reply to the opposition or the Provisional Refusal with appropriate argumentation or fight non-use or annulment motions.
In this array of actions, it is important to choose the most efficient ones, ideally advised by a knowledgeable local agent.
Letter of consent can be used in Serbia – as the IPO continues to hold ex-officio right to reject new applications (national and IRs) due to relative grounds, it is reasonable to expect this ‘conflict’ to be resolved by submitting a Letter of Consent of the owner of the prior right.
You can read more about the requirements here.
Cease & Desist Letters are used in the same way as in other jurisdictions and are always a good way to start – if the time permits – as they are used to prevent the conflict growing into an opposition or a matter going to Court.
Provisional Refusals can be complex and the best course of action depends on jurisdiction. We have written about best practices in Serbia and covered it in our Q&A series – here; there is even a Quick Guide on the topic mainly focusing on different terms for reply & potential extensions.
Proof of prior use can be an important cornerstone in oppositions – owner of the later right, during the procedure can always request the proof of use. This is important to know and keep in mind when considering going into the opposition as well as once the opposition has been filed against your application.
Proof of use has to be tied to the market itself – so the possibility of ‘online use’ is still inadmissible, neither are ads and brochures alone – as they still do not let you experience the product or the service advertised.
Basis for oppositions are reserved for relative grounds of refusal and not other IP rights (e.g. copyright)
In considerations when filing oppositions we give more details about the procedure in our 8 jurisdictions.
Annulment is the process through which it is sought to annul a trade mark as a whole or in part, as it did not fulfill basic criteria from the start. This refers to all absolute grounds, as well as basic rules on what can and cannot constitute a trade mark.
The process is now held before the IPOs (except for in Albania), whereas until recently Slovenia & Montenegro required a Court process, which was longer and more expensive.
We wrote about it in more detail here.
