New Montenegrin Trademark Law Gives 12-month Deadline to Trademark Owners

The Montenegrin parliament adopted a new Trademark Law on November 30, 2010. The law will enter into force on December 16, 2010.

The law brings an important novelty, affecting the owners of trademarks registered before the Serbian Intellectual Property Office before May 28, 2008, the opening date of the Montenegrin IPO. Namely, the decree on IPR enforcement, which regulated the validity of Serbian intellectual property rights after the opening of the Montenegrin IPO, prescribed continuous validity of the trademarks registered before the Serbian IPO, on the territory of Montenegro, until their renewal due date, without re-registration or payment of any additional fees. The new law, however, in Article 65, obligates trademark owners to request entrance of their rights into the Montenegrin trademarks register within 12 months from the coming into force of this law.

This rule does NOT apply to trademark owners who:

• Filed the renewal request,
• Filed the request for Montenegrin Certificate of Registration,
• Filed the request for change of name/address, or
• Requested recordal of the assignment of rights before the IPO of Montenegro after the beginning of its operations.

The above requests are regarded as requests for entrance into the trademarks register.

Article 65 does not relate to International registrations registered before the WIPO — refer to Information Notices No. 7/2007 and 29/2008. The final deadline to request continuation of effects of IRs designating Serbia and Montenegro to Montenegro, after the split of the State Union (June 3, 2006) was November 16, 2007.

In addition, the new trademark law aims to shorten the trademark registration process and achieve full compliance with the relevant EU regulations by abolishing the previous practice of substantive examination on relative grounds and introducing opposition proceedings. Under the new law, a trademark application will be examined on absolute grounds only and if it meets the requirements for registration, it will be published in the Official Gazette of the Montenegrin IPO. Third parties will have three months from the date of publication to file a written opposition.

Another novelty will be the possibility to appeal IPO decisions before the competent ministry. Furthermore, the cancellation of a registered trademark will be argued before the competent court as opposed to a proceeding before the IPO as prescribed by the current legislation.

The new trademark law will comply with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), which is crucial for the process of Montenegrin accession to the World Trade Organization (WTO).

For more information, please contact Jasna Jusic Paovic at our Montenegro office.

Source: PETOSEVIC, Montenegro IPO