Montenegro Amends Trademark and Patent Laws

Amendments to the patent and trademark laws entered into force in Montenegro on January 18, 2023. The trademark law amendments are intended to harmonize national legislation with Directive (EU) 2015/2436 and with the Singapore Treaty on the Law of Trademarks, while the patent law amendments aim to harmonize national legislation with Directive (EU) 2019/933.

Trademark Law Amendments

The graphical representation requirement has been removed, meaning that a sign can be represented in any form that distinguishes the goods or services applied for from those of other undertakings and enables the authorities to clearly establish the scope of protection that is sought. Sound marks may now be represented by audio files and not only by musical phrases shown in notation. Trademarks may now also consist of personal names and the three-dimensional features such as shape or packaging of goods, which was previously not directly specified in the law.

The list of absolute grounds for refusal has been expanded. The novelty is that a trademark will not be registered if:

• It does not adhere to the laws of the EU or Montenegro on geographical indications and appellations of origin, traditional expressions for wines, and traditional specialities guaranteed (TSGs); or
• It consists of the earlier denomination of a plant variety registered in Montenegro or the EU or reproduces it in its essential elements, while referring to a plant variety of the same or closely related species.

If a trademark opposition is based on an earlier trademark which has a reputation in Montenegro, the later trademark that is identical or similar to the earlier mark will not be registered regardless of whether the goods or services of the two marks are identical, similar or not similar. This was previously not clearly defined in the law.

Two new types of unathorized use of a trademark have been introduced:

• Use of a mark as a trade name or company name or part of a trade name or company name; and
• Use of a mark in comparative advertising in a manner that is contrary to the regulations on misleading and comparative advertising.

Previously, when suspending a trademark opposition proceeding while negotiating an agreement, parties had to reach an agreement within six months. Now, they have to reach an agreement within 24 months.

Provisions relating to licensing, continuation of the procedure and correction of errors in applications and registrations have been aligned with those of the Singapore Agreement of the Trademark Law.

Cancellation (on absolute and relative grounds) and non-use cancellation procedures are now conducted before the Intellectual Property Office (IPO), unlike before when they were conducted before the court. This is expected to make the procedures more efficient due to the IPO’s more extensive knowledge of IP matters.

Finally, the amendments introduced the simplified procedure for the destruction of counterfeit goods, which will make IP rights enforcement before the trade inspection authority quicker and more cost-effective.

Patent Law Amendments

The amendments to the Law on Patents introduce the Supplementary Protection Certificate (SPC) manufacturing waiver, which will enter into force when Montenegro joins the European Union. Once Montenegro joins the EU, companies that are locally based will be allowed to manufacture a generic or biosimilar version of an SPC-protected medicine during the SPC term, under two conditions:

• For the purpose of exporting to countries where SPC protection is not available or not enforceable; or
• For stockpiling during the final six months of the SPC term in order to place the product on the EU market once the SPC expires.

By: Mladen Čolović

For more information, please contact Mladen Čolović at our Montenegro office.