SERBIA Trends and Developments Contributed by: Dejan Bogdanovic and Mara Jankovic, Mikijelj, Janković & Bogdanović
Objective Limitation Period – Impact of the New Trademark Law Even though the new Trademark Law – hereinafter, the “Law” – is not so new (it was published in the Official Gazette of the Republic of Serbia, No 6/2020, which entered into force on 1 February 2020), an interest - ing question arises that has long been overlooked by the public in Serbia: the issue of the objective time limitation, as prescribed in Article 93, paragraph 1. Specifically, this issue concerns the application of time limitations in trade mark infringement matters, as modified by the Law. The Law specifies that “an action against infringement may be filed within a period of three years, as from the day on which the plaintiff became aware of the infringement and the infringer, but not later than five years from the day of infringement, or the last performed infringement, in the case of continual infringement of rights”. These are generally known as the subjective and objective time limitation periods. The subjective period is three years from the date of discovering the infringement and the perpetrator, whereas the objective time limita - tion is the time that has passed since the infringement actually happened. These two dates are relevant for all interested parties, since a court petition may be dismissed if it is deter - mined that the time period has lapsed. Such grave consequences deserve to be analysed in more detail. Notably, under all previous trade mark laws in Ser - bia, the time limitation was envisaged as five years from the date when the infringement was first com - mitted (eg, Article 74, paragraph 1 of the Trademark Law, Official Gazette of the Republic of Serbia, Nos 104/2009 and 10/2013). This clear standard was sys - tematically applied in practice. Both trade mark own - ers and infringers could rely on this provision. The courts also had a stable and reliable practice, so the situation seemed to be in good order. For example, when it comes to trade mark infringe - ments before the entry into force of the Law (1 Feb - ruary 2020), if a trade mark infringer was not sued within five years of the date when the infringement was first committed, the trade mark owner could no longer file a court petition – ie, the infringer could no longer be sued. To be more precise, in the event of
a lawsuit being filed, the infringer could invoke an objection that the plaintiff no longer has a right to file the petition since the objective time limit for filing the lawsuit has lapsed. It is important to emphasise that the court does not pay attention to the objective time limitation period ex officio – ie, it is up to the parties to keep the time limitations in mind. That is to say, the possible infringer could use this as a tool to fight off the petition. It is obvious that this was a clear and reliable way to identify the time at which the infringement could be prosecuted, and the trade mark owner could thus protect their rights. Also, this rule provides a clear cut-off point after which the trade mark owner has no legal ground to ask for further protection of their rights via the judicial system. The logic was that legal certainty takes precedence over trade mark owners’ rights. Another aspect to be considered is the concept of acquired rights. However, this was changed by the Law, although the scenario in which there is only one infringement in a specific case is not affected. It is clear that this is a rare scenario in practice. Even in this simple scenario, it is possible, in theory, to contest when the actual infringement took place – but this is not relevant to this article. Most infringements are repeated several times over a period of time, thus catching the atten - tion of the trade mark owner. The Law introduces the wording “or the last performed infringement”, which gives the trade mark owner a more flexible timeframe to initiate a court action. This change shifts the focus of the legislature from legal certainty to the side of trade mark owners. For example, if the infringer is periodically placing infringing products on the market, the trade mark owner now has the right to file a court petition for a period of five years after each and every alleged infringement. It is now up to the court to establish whether all infringements should be considered. This is also relevant to the matter of damages: should infringements that happened more than five years before the filing of the court be counted or not? No clear guidelines are given by the Law. This is a signifi - cant loophole that should be used with caution.
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