In most jurisdictions where new applications can be opposed, Letters of Consent cannot come into play, by default – filing of the opposition shows that the owner of the previous…
Trade mark searches are crucial when determining whether the intended mark can be protected in the desired country, based on relative grounds. These searches, which are the most common kind of searches, are called trade mark availability searches. It is essential to entrust the search to a local agent who can accurately advise on the implications of the search results and the necessary steps to be taken, so that the path to registration is obstacle free.
Alternative trade mark search criteria are also available, such as searches by owner, class or even the list of goods and services. Contact our office to find out more about trade mark searches that we offer and to receive our detailed Tariff for various searches.
The first step to trade mark validity is filing of a trade mark application in the territory of choice. Trade mark applications can consist of only words, figurative element or both; they can further be 3 dimensional, certification marks or they can represent a sound.
To find out more about trade mark requirements and types of trade marks in the territories we operate in, contact us for further details.
Additionally, if you would like to find out more, read ‘7 useful facts about Trade Mark
Trade marks are the only intellectual property right that is not legally limited and that can, in theory, last forever. In order for a trade mark to be valid, official fees need to be paid every 10 years. Depending on the jurisdiction the renewal payment can be made 6 or 12 months prior to the renewal deadline and the grace period can last anywhere from 4 to 9 months.
We regularly assist our clients with renewal payments by keeping track of the renewal dates, sending timely reminders, making prompt payments as instructed and keeping clients updated by letting them have the renewal certificates once the IPOs issue them.
In the countries where new trade mark applications are published and an objection period is foreseen, interested parties can file oppositions against an application in the predicted legal term. Our law firm frequently aids our clients with preparing and filing oppositions, by first assessing the chances of success and advising on best arguments to emphasize and then preparing the necessary text and supporting documents in a timely and efficient manner.
Additionally, we assist when replying to the oppositions filed against our client’s applications.
Contact us to find out more about legal terms for opposition, necessary documentation and how we can best assist you in opposition matters.
It is only in Serbia that official opposition procedures are new – starting February 2020. The new law still allows the IPO to ex officio examine new applications for absolute and relative grounds for refusal and only then publish the applications and enable oppositions.
You can find out more about this change on our blog.
Provisional Refusals entitle the applicant to respond within a 6 month period to the Intellectual Property Office which issued the Refusal through WIPO. Provisional Refusals are always based on the particular article of the IP law of the country refusing registration of the application and this is the reason why it is imperative to find an experienced local agent who can accurately predict chances of success in overcoming the Provisional Refusal and recommend the best course of action. Our firm has bountiful experience in not only assisting many clients through Provisional Refusal process, but at successfully overcoming obstacles to registration with our highly expert argumentation.
On our blog you can read in more detail about Overcoming Provisional Refusals in Serbia, as the only one of our jurisdictions where the IPO examines new applications for absolute and relative grounds.
EUTM (previously called CTM) filings enable the owner to have their trade mark valid in all EU countries. This is the value of EUTM filings – it is just one filing for 27 countries, which makes EUTM trade marks an affordable protection route.
On the other hand, it is all or nothing situation – as EUTM trade mark must be valid in all of the EU member states or in none.
We are able to assist you in EUTM availability searches, advise you on how to proceed and support you through the EUTM registration process.
When necessary, we also offer guidance when converting EUTM trade marks into national applications in Slovenia and in Croatia.
Tips on overcoming Provisional Refusals based on relative grounds in Republic of Serbia Most jurisdictions our office covers (Albania, Bosnia, Croatia, Kosovo, Macedonia, Montenegro and Slovenia) are based on the…
Starting this February, Republic of Serbia has changed their Trade Mark Law substantially by switching to an opposition based system rather than the one where the IPO examined all applications ex officio for absolute and relative grounds for refusal.
Lately, we have been noticing two increasing trends – filing of TM applications identical to large brands that have not yet broken into the market and cancellations due to non-use of otherwise known trade marks.
Licence can refer to patent and design rights, related know-how and trade marks.
It provides the licensee with the right to use an IP right for a certain period of time, for a fee, usually in a specific geographic area. At the same time, this allows the IP right’s owner to extend their brand into new markets quicker, to generate profit (through set fee or royalty), reduce costs and time to market penetration and therefore, often, gain competitive advantage.
We take this opportunity to inform you about upcoming forum held by our Customs IP department which will enable the brand owners to hold presentations directly before enforcement agents on our borders.
This event is immensely valuable as it will provide an opportunity to inform the people directly tasked with deciding if the goods before them should or should not be seized based on possible IP infringement – how to spot original or fake goods.
We have previously written about the importance of the annual Custom’s petition and, for the new readers, wanted to shortly again sum up the important points:
Tips on overcoming Provisional Refusals based on relative grounds in Republic of Serbia
Most jurisdictions our office covers (Albania, Bosnia, Croatia, Kosovo, Macedonia, Montenegro and Slovenia) are based on the opposition system – new applications are examined on absolute grounds, then published, and open for 3rd party oppositions based on relative grounds.
Here are a few details to keep in mind when filing national applications/designations:
While most jurisdictions we cover are members of the Madrid protocol ,Kosovo, for the time being is not. As a very small territory, it is often overlooked, but can prove strategically important for the companies that have interest in the Balkans area.
Enforcement and IP protection go hand in hand.
Important part of the enforcement strategy is a solid plan for seizure matters, especially in the Balkans region, where many trade routes intersect.
After a very succesful and fruitful first forum organized by the Customs Department of Serbia, we invite all brand owners to another forum concerning anti-counterfeited goods and IP infringement. Here, brand owners and their representatives will have the opportunity to directly speak to enforcement agents – both on the borders and in the market.
We are glad to have the opportunity to inform you about a forum to be held by our Customs IP department where brand owners and their representatives will have the opportunity to directly speak to enforcement agents – both on the borders and in the market.