Enforcement Committee and Trademark Office Practices Committee Update: Policy Dialogue Explores Need to Introduce Opposition Proceedings in Serbia

Published: March 15, 2019

Mirjana Saric MSA IP Belgrade, Serbia

A policy dialogue held in Belgrade, Serbia, on February 25 addressed the need to adopt changes to national trademark legislation and in particular to introduce an opposition system in trademark examination proceedings in Serbia.

INTA’s Enforcement Committee and Trademark Office Practices Committee (TOPC), and the Serbian Chamber of Commerce and Industry (CCIS) organized the event at CCIS’s office. Moderated by Mirjana Saric, a trademark attorney at MSA IP (Serbia), the dialogue attracted 42 attendees from the Serbian intellectual property (IP) community and representatives of Serbian government institutions, including Saša Lazovic, Deputy Minister of the Ministry for Education, Science and Technological Development; and Marija Božić, Head of Trademarks of the Serbian Intellectual Property Office.

The policy dialogue provided an excellent opportunity for the IP community in Serbia to hear the different perspectives of panelists and government representatives on the necessity and benefits of introducing an opposition system in the country.

Today, oppositions have become an effective part of trademark examination procedures worldwide, and as such are recognized by INTA Board Resolutions as a preferred tool based on numerous advantages in comparison with other examination systems, including the one currently in place in Serbia. In addition, the European Union Trademark Directive (Directive (EU) 2015/2436 of December 16, 2015) requires, among other things, all EU member states to introduce and implement oppositions as part of the examination system of trademark applications. Serbia as a candidate country is under legal obligation to harmonize its trademark law with that directive and introduce the opposition system.

Andrea Klein, a trademark attorney with Akran Intellectual Property (Italy), and Chair of TOPC’s European National Offices Subcommittee, spoke about the experience of the transition period immediately following the introduction of the opposition system in Italy and compared it with the situation in Serbia. Noting one advantage in Serbia, he emphasized that Serbian examiners already have a long-established practice of analysis and decision in adversary proceedings before the Serbian Intellectual Property Office since the office always decided cancellation and invalidity proceedings. In addition, the examiners are charged with the review of relative grounds of refusal as a part of the ex officio examination, which will be advantageous once the opposition system is introduced. In contrast, Italy had gone through a much more difficult process since the Italian Patent and Trademark Office was not handling any type of adversarial proceedings and was not accustomed to conducting substantive reviews of trademark applications before it introduced the opposition system.

Dusan Popovic, a professor at the University of Belgrade-Faculty of Law, spoke about the need for harmonization of trademark law according to the EU directive. He described the harmonization of the Serbian Trademark Law with regards to the introduction of the opposition system as unconditional and preferable to any other type of trademark examination, including a system of ex officio examination of relative grounds.

Ruza Urosevic, Judge of the Administrative Court of Serbia, spoke about current legal standpoints in the case law of the Administrative Court and encouraged the creation of adversary procedures as part of the office’s examination of trademark applications, instead of introducing this type of inter partes proceedings only in the post-registration stage (for example, in cancellation proceedings). According to the judge, the practice in Serbia is to use cancellation proceedings (which should be used only exceptionally as an extraordinary legal remedy) as a substitute for the current lack of opposition proceedings. Therefore, the current practice and the need for the adversary proceedings in trademark examination has completely changed the intended purpose of cancellation proceedings.

Borislav Dakic, IP counsel in Hemofarm A.D. (Serbia), one of the largest local trademark owners in Serbia, shared some impressions based on his trademark prosecution experience in the region. Noting that the vast majority of countries in the region use opposition systems, he suggested that from the user’s experience, opposition systems seem the more time- and cost-efficient solution compared to the ex officio examination in Serbia, which includes several inefficient actions such as letters of consent, and cancellation actions based on non-use against earlier trademarks.

Following the panelist’s introductory presentations, the participants engaged in a lively discussion about the advantages and weaknesses of the different systems. Some participants expressed concern that the introduction of an opposition system might pose potential difficulties for small local companies which may own trademarks but are not skilled in IP matters and therefore not informed about how an opposition system works. However, the conclusion from the discussions of this panel was that while there is no perfect system, the introduction of the opposition system would improve the current system and would create a higher level of legal certainty and security among rights holders in Serbia.

As a result of the policy dialogue, participants expressed recommendations that this dialogue should be continued among all relevant stakeholders and that the details of the proposed procedures must be carefully considered once the new trademark law is drafted and made available for public consultations. Both INTA and the CCIS should play an important role in informing Serbian rights holders and all stakeholders about the necessary changes and the benefits an opposition system would bring to trademark prosecution and protection in Serbia.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association