SERBIA Trends and Developments Contributed by: Dejan Bogdanović and Mara Janković, Mikijelj, Janković & Bogdanović
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 estab - lished practice of protecting trade mark owners and earlier filed trade mark applications under the pretext of “public interest” (to prevent confu - sion 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 differ - ent 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 appli - cant. 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 unnecessar - ily burden the IP Office and increase the costs
of procedure for applicants, as potentially such owners of earlier trade marks would not be inter- ested 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 ser - vices, 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 own - ers 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 point - less, 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 previ - ous 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 expe - rienced 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 deci - sion by the IP Office.
503 CHAMBERS.COM
Powered by FlippingBook