PROTECTING A TRADEMARK

How to protect a trademark?

Trademark registration in national and international frameworks

What is a trademark?

A trademark is a type of intellectual property. In addition to trademarks, intellectual property includes copyrightand patents , which are dealt with in separate texts. In addition, the legal protection of software as specific intellectual property is covered in a separate blog. Intellectual property law is a practice area of the law office Pekic.

A trademark is a 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. A sign may consist of any signs, words, personal names, letters, numerals, drawings, colors, three-dimensional shapes, a combination of those signs, etc. As trademark attorneys in Serbia, we usually hear questions such as: how to protect a trademark, how to trademark a logo, how much is a trademark, how does trademark protection work, how to protect a brand name, how long does trademark protection last, etc. It is a vital topic for businesses nowadays.

Some of the recognizable trademarks are:

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Photo by Dollar Gill on Unsplash

Types of Trademarks

Serbian Law on trademarks prescribes that a trademark can be individual, collective or guarantee trade mark.

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

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

A 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 a trade mark.

Trademark registration in Serbia:

Brand protection certainly requires you to register your trademark. To protect the brand, the Law on trademarks provides for the following steps:

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. A trademark search is the first step.

2. Trademark application, which required elements are:

  • request for the trademark registration: Form Ž1, can be found on 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: following the classes of the International Classification of goods and services - The Nice Classification. The goods andservices 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. A mark can 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

How much does a trademark cost in Serbia?

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 16.470,00 – 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 3.300,00 – around EUR 28 is added) to RSD 32.920,00 (for collective and guarantee trademark, if the mark is registered for a maximum of three classes; whereas if the mark contains a drawing, special font, color - an additional RSD 4.940,00 – around EUR 42 needs to be paid).

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

The amount of this fee also depends on the type of trademark and ranges from RSD 32.920,00 – 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 4.940,00 – around EUR 42 is paid) to RSD 41.140,00 – around EUR 350 for a collective mark and a guarantee mark, if the mark is applied for a maximum of three classes, whereas if the mark contains a figurative element, an additional fee of RSD 4.940,00 – around EUR 42 is paid).

How long does trademark protection last in Serbia?

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

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International protection of a trademark

If the above-mentioned steps have been successfully fulfilled, your trademark is protected in Serbia. If a third party uses your trademark, that unauthorized use would constitute trademark infringement. 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 in Serbia. 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 for international trademark protectionis 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!

Filing for trademark protection

Serbian Law on trademarks stipulates that 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 a 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 outlined 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.

How long is a trademark protected?

This trademark is valid for 10 years and can be extended.

How much does a trademark cost?

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 8.210,00 – 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.  

Trademark attorney in Serbia

Trademark registration in national and international frameworks could seem like a confusing procedure, but with an experienced trademark lawyer, it does not have to be.Trademark violation is becoming more frequent, and to deal with it, hiring a trademark infringement attorney is always a more secure way. If you are looking for a trademark attorney in Serbia, Law office Pekić is at your disposal. If you are interested in how much does a trademark attorney cost, you can contact us via the e-mail address [email protected], or by sending a message on Facebook messenger or Linkedin.

Cover photo: Gema Saputera on Unsplash