How to protect a trademark?

How to protect a trademark?

International protection and protection for the territory of the Republic of Serbia

What is a trademark?

Trademark is the right that protects a mark used in the course of trade to distinguish goods and/or services of one natural or legal person from identical or similar goods and/or services of another natural or legal person. Sign may consist of any signs, words, personal names, letters, numerals, drawings, colours, three dimensional shapes, combination of those signs, etc.

Some of the recognizable trademarks are:

Photo by highlight id on Unsplash
Photo by Dollar Gill on Unsplash

Types of Trademarks

A trademark can be individual, collective or guarantee trade mark.

Individual trademark is a mark, legally protected, and which is used in the course of trade by trademark holder (owner).

Collective trademark represents a certain type of association of manufactures and/or providers of services, which may be used by persons who are members of such association.

Guarantee trademark is used as a guarantee of quality, material, correctness etc. and it is used by several persons under the supervision of the proprietor of trade mark.

Trademark registration procedure for the territory of the Republic of Serbia:

1. Check if your mark or a similar mark is already protected.

You can do this by searching the trademark database yourself (E-register and Romarin) or by submitting a request to the Intellectual Property Office for a trademark search. If you decide for the second option, you need to pay a fee in the amount of RSD 3240 (around EUR 28).

2. Submit the trademark application, which required elements are:

  • request for the trademark registration: Form Ž1, can be found at the website of the Intellectual Property Office.
  • mark for which protection is requested: on the form Ž1 there is a space left to insert the mark.
  • List of goods and/or services to which the mark relates: in accordance with the classes of the International Classification of goods and services - The Nice Classification. The goods and services are listed, for example: disinfectants belong to class 5, paper and cardboard to class 16, furniture to class 20, ice creams to class 30, etc. It is possible for a mark to be registered for more than one class. This would mean that if the applicant has a brand of razors and personal care products, he should register for class 3 which includes non-medical cosmetics, class 8 which includes electric and non-electric hand-held personal care devices (razors) and class 21 which includes cosmetic accessories (shaving brush). The list of goods and services is very important because the proprietor of the trademark, after the registration, will have the exclusive right to use the trademark only for the goods and services for which he has registered the trademark.
  • Information about the applicant.

3. Paying the fee

There are two types of fees:

a) Fee for a trademark application

The amount of the fee depends on the type of trademark and ranges from RSD 16,470 – around EUR 140 (if the sign consists of only words and is registered for a maximum of three classes - as the above example of a brand of razors and personal care products; whereas for some drawing, color, special font of letters, etc., the amount of RSD 3,300 – around EUR 28 is added) to RSD 32,920 (for collective and guarantee tardemark, if the mark is registered for a maximum of three classes; whereas if the mark contains a drawing, special font, color - an additional RSD 4,940 – around EUR 42 needs to be paid).

b) Fee for grant, maintenance of granted trademark, for a ten year period

The amount of this fee also depends on the type of trademark and ranges from RSD 32,920 – around EUR 280 (for an individual trademark, if the mark is applied for a maximum of three classes; whereas if the mark contains a figurative element, an additional fee of RSD 4,940 – around EUR 42 is paid) to RSD 41,140 – around EUR 350 for a collective mark and a guarantee mark, if the mark is applied for for a maximum of three classes, whereas if the mark contains a figurative element, an additional fee of RSD 4,940 – around EUR 42 is paid).

Trademark is acquired when it is entered in the Trademark Register, and it is valid for 10 years. After 10 years, it is possible to extend it.

Photo by Taras Chernus on Unsplash

International protection of a trademark

If the above mentioned steps have been successfully fulfilled, your trademark is protected in the territory of the Republic of Serbia. This means that you have the exclusive right to mark your goods/services with that trademark, as well as to prohibit others from using that mark for the same or similar goods/services. However, if you want to export your product abroad or use your service abroad, in that case it is necessary to perform international trademark registration. The quickest and easiest way to do so is to use the Madrid system. Through this system, it is possible to protect a mark in 109 countries around the world, by submitting only one application and paying one international fee!

To whom is the application submitted?

The request is submitted to the Intellectual Property Office of the Republic of Serbia. Before submitting this application, it is necessary first to submit a trademark application for domestic recognition (explained in the procedure of trademark registration in the territory of the Republic of Serbia).

Who can register a trademark through the Madrid system?

If the application is submitted to the Intellectual Property Office of Serbia, the Madrid system can be used by a national of the Republic of Serbia, or a person with the domicile in the Republic of Serbia, or a legal entity having a real and effective industrial or commercial establishment in the Republic of Serbia.

The course of the procedure

If the application submitted to the Intellectual Property Office of the Republic of Serbia contains all the required elements, and information provided in the international application corresponds to the basic mark, the Office shall forward it to the International Bureau of the World Intellectual Property Organization. It will perform a formal examination only, checking whether the application complies with the formal requirements set forth in the Madrid Protocol and Regulations. After that, the Institutes of the countries in which registration is requested (some of the 109 countries mentioned above) examine the application – the substantive aspects: whether the mark is capable of functioning as a trademark and whether it conflicts with a mark already protected. The Institutes of these countries will inform the applicant whether the mark has been protected or rejected, within 12-18 months. This trademark is valid for 10 years, and can be extended.

Fees

In the case of international trademark registration, there are two fees:

  1. "a domestic fee" - a fee paid to the Intellectual Property Office of Serbia, for an application for international registration of a trademark, which amounts to RSD 8,210 – around EUR 70.
  2. "an international fee" - a fee paid to the International Bureau of the World Intellectual Property Organization, the amount which depends on the number of countries in which the mark is to be registered, the number of classes for which the mark is registered etc.  

This blog serves exclusively for informational purposes, therefore it does not constitute a legal service. For legal assistance, tailored to your needs, contact the Pekić Law Office at: pekic@attorney.rs

Cover photo: Gema Saputera on Unsplash

Author: Sonja Pekić