SERBIA Law and Practice Contributed by: Djordje Lukic and Katarina Kostic, Popović, Popović & Partners
separate IP departments. The parties have no influ - ence on decision-makers. Judges are assigned in accordance with the internal court rules. 8.2 Effect of Registration Registration of a trade mark provides the proprietor with advantages in litigation. It creates presumptions of ownership and validity and grants exclusive rights to prevent unauthorised use. Protection extends to similar goods or services where there is a likelihood of confusion, while famous marks are protected even for dissimilar goods or services, without the need to prove likelihood of confusion. 8.3 Costs of Litigating Infringement Actions Costs for conducting a court infringement procedure depend on the value of the dispute, as court taxes and attorney-at law’s-fees are calculated upon the value of the dispute. Typically, the costs in first instance may be EUR3,000–10,000. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement There are several situations in which a trade mark holder may not prohibit a third party from using an identical or similar sign, such as when: • it corresponds to that party’s company name acquired in good faith prior to the trade mark’s priority date; • it is used in accordance with honest commercial practices; • it is used as one’s own name or address; • it contains descriptive indications, or • its use is necessary to indicate the purpose of the goods or services, particularly accessories or spare parts. The proprietor also cannot prohibit the use of an ear - lier right valid only locally, provided that such right is recognised under Serbian law and used within its territorial limits. Other defences commonly raised in practice include:
• arguments that the statutory limitation period has expired; • there is no similarity between the signs; • lack of likelihood of confusion; and • the existence of earlier rights. Defendants often try to cancel or revoke the trade mark on which the infringement action is grounded. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Use of copyrighted works without the author’s con - sent is permitted only in specifically defined situations set out in the Copyright and Related Rights Law, pro - vided that such use does not conflict with the nor - mal exploitation of the work nor may unreasonably prejudice the legitimate interests of the author or right holder. These situations include: • court and administrative proceedings; • reporting on current events; • certain educational purposes; • library and archive preservation copying; • limited private copying for non-commercial use; • temporary technical reproductions; • quotation; and • certain broadcasting, public display and disability access exceptions. Copyright law expressly allows free adaptation for parody or caricature, provided that such use does not create confusion regarding the source of the work. News reporting, quotation and library/archive preser - vation copying are all listed as exceptions based on the principle of freedom of information. Serbian law does not recognise a “fair use” doctrine identical to US law, but it permits limited descriptive or necessary use in accordance with honest practices. 9.3 Exhaustion Trade marks are exhausted as soon as goods bear - ing the trade mark are first put on the market any - where in the world by the trade mark proprietor, or with their consent. As a result, the proprietor cannot prohibit further commercialisation of that specific item (doctrine of first sale). However, exhaustion does not apply where legitimate reasons exist for the trade
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