The Opposition System in Serbia – Assessment After Four Years of Use

The Trade Mark Law of Serbia (Official Gazette of the Republic of Serbia No 6/20) came into force on 1 February 2020, introducing “opposition” for the first time in the legal history of Serbian trade mark law (Article 7 and Articles 34–37 of the Trade Mark Law).

Article 7 of the Trade Mark Law stipulates that an opposition can be filed by the owner of a company registered before the date of filing the trade mark application against such an application that contains an identical or similar name to that of the company, or against an essential element of it when the goods or services are similar or identical. An opposition is not permitted if the applicant for the opposed trade mark had a company with an identical or similar name at the time of filing the application.

Articles 34 to 37 set the deadlines and conditions for filing an opposition and the opposition proceedings. An opposition can be submitted by a proprietor of an earlier right. The deadline for submitting an opposition is three months from the date of publication, and the applicant has 60 days to respond to the grounds of the opposition. This deadline cannot be extended. Parties may request the Intellectual Property Office (the “IP Office”) to suspend the proceedings for up to 24 months for the purpose of attempting a peaceful resolution of the dispute (cooling-off period). The IP Office is authorised to request evidence of prior use of the trade mark from the opposing party, based on a proposal from the party against whom the opposition was submitted. Failure to provide evidence of prior use of the trade mark by the opposing party will result in the rejection of the opposition. However, if the applicant of the opposed trade mark does not request such evidence, the IP Office has the right to uphold the opposition (if it is considered grounded in other legal reasons).

What is interesting is that the legislature retained the right for the IP Office to continue deciding ex officio, on relative grounds, the registration of trade mark applications (Article 6 of the Trade Mark Law), in addition to being authorised to decide on absolute grounds. After the IP Office conducts an ex officio examination of the conditions for the registration of a trade mark application (as was prescribed in all previous trade mark laws in the IP Office’s century-long practice), the trade mark application is published for opposition – ie, if the IP Office believes that the application meets the conditions for registration. It should be also noted that in cases where the IP Office does find that an older trade mark or trade mark application poses an obstacle to the registration, it will issue an Official Action to the applicant. If the applicant does not respond, the application will be considered abandoned. No appeal is possible after the decision of the IP Office.

Disadvantages of the Hybrid System

The IP Office seems unable to give up the established practice of protecting trade mark owners and earlier filed trade mark applications under the pretext of “public interest” (to prevent confusion among market participants in the Republic of Serbia). This can be seen particularly in cases where conflicting trade mark applications relate to different goods in the same classes, and where the signs are not identical, or in cases of so-called linkage of goods and services in different classes. The IP Office practically overlooks the fact that owners of older trade marks and trade mark applications have the right to oppose published trade mark applications (which the IP Office previously examined) and to present their reasons for believing that there is a similarity between opposing marks, similarity of goods in the same classes, or connectivity of goods.

In such cases, when the IP Office ex officio refuses a trade mark application on the grounds of potential similarity to an earlier trade mark that has been registered for over five years in the Republic of Serbia, a relatively costly procedure for cancellation of the trade mark due to non-use often has to be initiated by the affected applicant. Owners of international trade marks often do not participate in these non-use cancellation proceedings, so decisions are then made by the IP Office to cancel such trade marks due to non-use. These cancellation procedures unnecessarily burden the IP Office and increase the costs of procedure for applicants, as potentially such owners of earlier trade marks would not be interested in lodging an opposition.

From the point of view of IP lawyers, the IP Office should publish a trade mark application (except in cases of identical signs and goods and services, considering current legal provisions) and leave it to the market participants themselves – ie, the trade mark owners – to assess whether or not the published sign may pose a threat to their trade mark/trade mark application. It is not evident why the IP Office continues to exercise the right to decide on behalf of trade mark owners and to evaluate what is in the best interests of trade mark owners or the market in general.

Given that the IP Office has previously decided, ex officio, that a trade mark application is not similar to older trade marks and/or trade mark applications, the IP Office can be taken to have already concluded that there is no obstacle to registration, and that any opposition is pointless, since it is the IP Office that will decide on the opposition, if filed. This position of the IP Office has been confirmed in several of its previous decisions, which raises the question of the purpose of submitting an opposition. Of course, this position should not be understood as a rule; however, applicants of trade mark applications that have been published and against which an opposition has been filed often refer to the fact that the IP Office, as a knowledgeable and experienced body, had already examined the trade mark application regarding the sign/trade mark of the opponent and deemed that the signs were not similar. It is unlikely that the IP Office will change its expert opinion in such cases, unless the opponent points out an obvious oversight in the ex officio decision-making or provides other evidence that could influence a different decision by the IP Office.

Advantages of the Current System

The opponent has the possibility of presenting their arguments to the IP Office, so that it can reconsider its previous decision on the basis of which the trade mark application was published – ie, there is a possibility to discuss and elaborate on what is new and has proven to be beneficial for all parties involved. However, it should be noted that, in any case, this possibility exists in the institution of invalidation proceedings.

Conclusion

Changes to the opposition system are worth considering, and it might be beneficial to consider the practices of other IP offices, such as those in the UK and USA, which conduct searches and inform the applicant of possible obstacles to registration – ie, without issuing an Official Action with attendant legal consequences, such as is the practice of the IP Office of Serbia.