Trade mark

Trade mark searches

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.

Trade mark applications

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 registration in the Balkans’

Trade mark renewals

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 month 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.

Opposition preparation and filings

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 (https://ptma-mihailovic.com/serbia-changes-to-the-opposition-based-tm-system)

Provisional refusal reply

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 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

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 28 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.