Serbia Introduces Opposition System: A Major Leap Towards More Harmonised Trademark Law

After much rescheduling and protraction, the long-awaited new Trademark Act was finally adopted on 24 January 2020 and came into force a week later. The new law introduces a number of fundamental changes, eliminating certain shortcomings of the previous law, allowing for more efficient protection and further harmonisation of Serbia's legislation with EU law.

The key novelties introduced by the new Trademark Act are:

1. The trademark opposition system: a posteriori complaint

   Until now, the Serbian Intellectual Property Office (IPO) examined trademark applications both on absolute and relative grounds, while interested parties could only file a written observation to the Serbian IPO (during the registration process) and/or initiate cancellation proceedings due to similarity (once the trademark has been registered). The new Trademark Act introduces a heterogeneous solution, retaining the previous observation system where the IPO still examines trademarks on absolute and relative grounds, while also introducing an opposition system where interested parties can challenge trademark registration through opposition proceedings.

   After 1 February 2020, all applications that successfully pass the ex officio examination will be published in the IPO's Official Gazette. Interested parties will have the opportunity to file an opposition based on relative grounds within three months from publication, whereas the applicant will be allowed to submit a written response within 60 days from receiving the opposition. Failure to respond will lead to acceptance of the opposition. Furthermore, the applicant may require the opponent to prove that their earlier trademark was used in Serbia during a prior period of five years. If the opponent does not file evidence in this respect, the opposition will be refused. The law also allows for a 24-month cooling-off period during which the parties may temporarily suspend the proceedings to negotiate an amicable solution.

   Apart from creating a more transparent and holder-protective system, the new Trademark Act could have significant practical implications for trademark holders who will need to monitor new applications in order to become aware of potential conflicts as early as possible.

2. Parallel imports: the international exhaustion system

   Another important novelty is the reintroduction of an international exhaustion system for parallel imports (which was previously in place for several years until the changes from 2013)...