When the owner of a leading French industrial company was asked to choose between the fire in his factory and the loss of his trademark, he claimed he would choose fire, because the new factory could be built in shorter time and with less expense than creating the new trademark. This example supports the fact that the goods are sold by the distinctive feature, not by its quality. Goods or services, that are marked with well known trademarks, are conquering the market far easier with this powerful means of commercial advertising, and therefore are usually enjoying superior position on the market..
What is a trademark?
Trademark is an identification sign for goods or services, which are produced or provided by one natural or legal person, so consumers may distinguish it from the same or similar goods or services of other persons. The sign may consist of words, slogans, letters, numbers, images, colors, three-dimensional shapes, as well as musical phrases. A trademark represents the company and it is the main cause of its business reputation.
Why to register?
In order to enjoy the legal protection in commercial trade, trademarks for goods and services need to be registered and protected in accordance with applicable regulations. According to the theory that is accepted in the Western Balkans, process of registration has a constitutive character in acquiring the protection of trademark by issuing a Trademark Certificate and registration of the trademark in the Register, despite the theory of the first use of the trademark in commercial trade. This means that, in the case of conflict between registered trademark and unregistered sign, the holder of the registered trademark has the exclusive right to protected trademark use for marking of goods or providing services to which the trademark relates. Trademark is an absolute right. Its holder may prohibit other persons to use it without authorisation, or realize its right ultimately in administrative procedure.
Regarding the unauthorised use of trademarks, penal provisions of the trademarks laws, recently passed in the SEE Region, are very harsh. The fine provided for this misdemeanour against a company, that is using protected trademark, is amounting to between EUR 1 000 and EUR 28 000, as well as a personal fine between EUR 500 and EUR 2 000 against the responsible person in the company.
The procedure
The procedure for trademark registration shall be initiated with an application submitted before appropriate national or regional trademark authority (e.g. Intellectual Property Office in the Republic of Serbia or Montenegro, Patent Office in Bulgaria, State Office for Inventions and Trademarks in Romania, or Institute for Intellectual Property of Bosnia and Herzegovina). The application and the sign need to fulfill certain conditions provided by legislation. Foreign natural and legal persons shall be represented before a trademark authority by a professional representative or by domestic attorney. When the requirements are examined and confirmed, and the relevant registration fee is paid, the trademark authority shall issue the Trademark Certificate, record prescribed information in the Register as well as publish the registered trademark in the official gazette. The validity of the trademark registration is 10 years as from the date the application was submitted and can be renewed unlimitedly for following 10-year periods.
International protection
International exchange of goods has caused formation of international trademarks that keep the validity in the territory of several countries. International registration shall be provided by the national trademark authority in the country of origin, which shall forward the application to the International Bureau of the World Intellectual Property Organization (WIPO) that provides trademark protection in requiring countries. This way, WIPO administers the international registration system of trademarks – international protection. This system has been incorporated by the "Madrid Agreement" concerning the International Registration of Trademarks and The Protocol to the Madrid Agreement. International protection is valid for 20 years and may be renewed unlimitedly.
However, persons that have cross-border activities, on the basis of nationality, residence or business seat, may enjoy international protection and registration taking effect in the required countries of the Madrid Union (Albania, Hungary, Bosnia and Herzegovina, Croatia, Serbia, Montenegro, Bulgaria, Romania, Slovenia, Germany, Poland etc.). This advantage is based on national registration or the application for registration before trademark authority of the country of origin.
In accordance with European Union directives, national trademark legislation has been recently harmonized and balanced in the parties of European Union community. The most significant goal this harmonization scored is international protection of trademarks, which is particularly important for international companies. Now they can protect the trademark in the country of origin, with effect in all countries they are doing business in. Therefore, efficient and fair system of intellectual property encourages the countries in the SEE Region to speed-up their economic development, as well as social and cultural well being.
What can we offer?
Our company supports fair and efficient system of IP and related matters as one of the indicators of development of the Western Balkans. We serve our clients during the whole procedure of national/international protection of a company trademark, including preparation and submitting the application to the appropriate authority, representing clients before persons who are using registered trademark without authorization, representing clients before Commercial court related to IP issues, as well as assisting in sale or licensing of protected trademark as valuable asset in commercial trade.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
