SERBIA Law and Practice Contributed by: Djordje Lukic and Katarina Kostic, Popović, Popović & Partners
pute before the Administrative Court may be initiated, usually lasting between three and five years. 5.6 Amendment in Revocation/Cancellation Proceedings Amendments in revocation and cancellation proceed - ings may be permitted to a limited extent. A party may amend its request before the first-instance decision, provided the amendment is based on essentially the same factual circumstances. The IP Office decides whether a proposed amendment is permissible. Accordingly, parties may supplement their requests with additional arguments or evidence relating to the same facts but cannot expand the request to different factual circumstances. 5.7 Combining Revocation/Cancellation and Infringement Revocation and cancellation proceedings are con - ducted before the IP Office, separately from infringe - ment actions; those are dealt with by the courts. If validity is challenged in infringement proceedings, courts withhold the infringement procedure until the final decision of the IP Office on the validity of the trade mark. 5.8 Measures to Address Fraud When a trade mark application is filed in bad faith or in breach of a legal or contractual obligation, a party whose legal interest has been violated may initiate court proceedings in order to be declared the appli - cant or holder of the trade mark. If bad faith is estab - lished, the court transfers the status of applicant or right holder to the plaintiff, who becomes the holder of the mark in the Trademarks Register.
An assignment agreement has to contain: • the date of signing; • the names/company names of the parties and their domicile/residence or seat; • the trade mark registration or application number; and • the amount of compensation, if stipulated. Short-form agreements are acceptable. The original assignment agreement or its certified copy has to be submitted. For certified copies, apostille or legalisa - tion is required unless there is an agreement between the country in question and Serbia, upon which legali - sation is not required. Recordal may be refused if the assignment would cause confusion in trade as to the type, quality or geo - graphical origin of the goods or services, unless the assignee disclaims protection for the relevant goods or services. Partial assignments are allowed, but recordal will be refused where the assigned goods or services are essentially similar to those remaining with the assign - or. Trade mark rights are transmissible upon death and through legal succession. 6.2 Licensing Requirements or Restrictions The applicant/holder of the trade mark may grant a licence – ie, grant the right to use the trade mark in respect of all or certain goods or services. The applica - tion for recordal of the licence is filed on a prescribed form together with enclosed proof of legal title, with translation (which may be partial) certified by a court translator. Short-form agreements are acceptable. The original licence agreement or its certified copy has to be submitted. Certified copies have to be legalised and apostilled unless there is an agreement between the country in question and Serbia, upon which legali - sation is not required. A licence may be exclusive or non-exclusive, and lim - ited to a certain territory or time frame. The law does not limit the duration of trade mark licences. Trade mark applications can be licensed under the same conditions as registered trade marks.
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
An applied/registered trade mark may be assigned in whole or in part. Collective and certification marks cannot be assigned. An assignment may be based on a written assignment agreement, a change in the legal status of the trade mark holder/applicant, or a court or administrative decision.
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