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Views/ IP Highlights June 2014
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Dragomir KojićAdvokat / Partnerdragomir.kojic@karanovic-nikolic.com
26/06/2014
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Montenegro

In the light of recent developments in trademark protection practices and the intensification of EU legislative harmonisation, amendments to the Law on Trademarks ("the Law") have been adopted. Amendments to the existing Law will mainly serve to improve rules by setting, in certain cases, stricter standards, and will remove certain ambiguities that currently exist in the Law.
Nonetheless, some of the introduced changes will likely affect trademark owners, as well as new applicants for trademark protection. The key novelties include:

Trademark protection rights are effective upon publication of trademark registration

A main change from the previous legislation is that now the Law explicitly provides that a trademark owner is entitled to the full range of rights from the date that a trademark registration is published, i.e. as of that moment, protection rights can be applied to third parties. The objective of this amendment is to prevent possible abuse.
Another change instated by the new Law is the limitation of court action when deciding on possible compensation of damages in cases where the subject matter is still a non-protected trademark. In such cases, the court is required to suspend the decision-making process until the completion of the registration procedure before the IP Office and publication of the trademark registration. This solution has been adopted in order to unify court activities in cases where there is a pending trademark registration. 

Opposing trademark registrations

Trade/commission agents or representatives were previously explicitly banned from applying for a trademark registration for trademarks held by a party from the Paris Union member states for the Protection of Industrial Property and the World Trade Organization. This is no longer applicable. Hereinafter, this will be a possibility, but solely with explicit consent from the trademark holder or in cases where the trade/commercial agent or representative succeeds in justifying the reasons for such action.

Stricter prerequisites for trademark protection usage rights

Previously, it was sufficient to prove that a trademark owner only began using a trademark during the five (5) year period since registration, i.e. that the trademark was used in any given manner or form; whereas the newly adopted provisions provide, in cases where an opposition has been filed, that it is necessary to prove real use of the trademark by its owner in the five-year period, or to specify a valid reason for non-use of the trademark. The actual use of the mark will be determined according to the standards for economic exploitation of the trademark and the basic function of the trademark registration.

New Deadlines for the Protection of Rights

The newly adopted amendments significantly expand the ability of a party to file a claim for the annulment of a registered trademark. Pursuant to the new amendments, it is now possible to cancel a registered trademark both based on the absolute grounds for refusal of registration and on relative grounds for refusal of registration of a trademark. The claim for annulment can be filed during the entire period of validity of the trademark and following the expiration of the period of protection. However, not all reasons will be considered eligible as a basis for filing a claim without limitation deadlines and a period of ten (10) years for setting specific, explicitly listed, absolute grounds for the refusal of registration will be introduced.

Additionally, the law also introduces a uniform period of five (5) years for filing all other claims, with the exception of annulment, thus cancelling the previous distinction between subjective and objective limits.

The trademark owner now has the right to request that a final judgment on a claim be published in print or electronic media at the expense of the defendant.

Pursuant to the amendments, other interested parties can now also file claims – i.e. an exclusive licensee or professional organisation for the protection of rights.

Damage Recovery

Amendments to the Law now provide greater choice for trademark holders which allows for the alternative to opt for compensation of damages, or to request from the defendant directly the amount of compensation which would, under the circumstances, be sought on the basis of a license agreement, had it been concluded. It should be emphasised that a trademark holder has the right to demand triple the amount of compensation in situations where the defendant acted intentionally or by gross negligence.

Interim Measures

There is a new form of interim measure for trademark infringement - prohibition on the disposal of funds at financial institutions and disposal of other property of the opponent of the collateral. Furthermore, the court is authorised to appoint an interim measure even without notifying the opposing party, should the measure otherwise not be effective or incur irreparable damage.
In addition, the deadline for filing a claim in order to justify the interim measure has been extended from the previous fifteen (15) days to twenty (20) working days or thirty one (31) calendar days as of the date of the receipt of the decision on an injunction by the trademark holder.

Penalties

Finally, since there were previously no provisions pertaining to misdemeanours - now specific penalties for legal entities have been introduced in an amount of up to EUR 20,000. 

Although notable progress has been made with respect to the elimination of ambiguity, certain legal uncertainty shall remain until the courts and competent bodies establish specific practices.

 

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