News Item
New trade mark law in Montenegro
1 July 2010
Following the separation of the union state of Serbia-Montenegro and the independence of Montenegro from Serbia in 2006, a new trade mark law is expected to be introduced in Montenegro shortly.
One of the most important provisions of the new law relates to existing trade mark registrations that previously covered Serbia-Montenegro. Before Montenegro became an independent state, trade mark protection for Montenegro was obtained by registering the mark in the union state of Serbia-Montenegro. Following the separation of Montenegro from Serbia, such registrations were deemed to become registrations in Serbia. However, the new law in Montenegro is expected to provide that any existing registrations in Serbia-Montenegro will be deemed to continue to provide protection in Montenegro, although such continuous protection will not be granted automatically.
Rather, in order to enjoy continuous protection for an existing trade mark that was previously registered in Serbia-Montenegro, it is expected that the new law in Montenegro will require the proprietors of such existing registrations to file a request at the Montenegro Trade Marks Office that the registrations be entered onto the Montenegro Trade Marks Register. Such requests must be filed within twelve months of implementation of the new law. The only exceptions to this provision relate to trade marks in respect of which certain actions have already been requested at the Montenegro Trade Marks Office, which in themselves are considered to be requests for entry of the mark onto the Montenegro Trade Marks Register. These exceptions are: requests for renewal filed at the Montenegro Trade Marks Office; requests for Montenegro registration certificates; requests for recordal of a change of name or address filed at the Montenegro Trade Marks Office; and requests for recordal of an assignment filed at the Montenegro Trade Marks Office.
If an existing trade mark registration in Serbia-Montenegro is not entered onto the Montenegro Trade Marks register within the period specified in the new law, the mark will be deemed to no longer enjoy protection in Montenegro. In turn, this could lead to third parties being free to use or register the mark in Montenegro, thereby taking advantage of any reputation that had been developed in the mark through prior use in Montenegro and elsewhere.
If Montenegro is a territory of commercial relevance and if trade mark protection had previously been obtained in Serbia-Montenegro, we recommend that such trade marks are entered onto the Montenegro Trade Marks Register as soon as possible to ensure that continuous protection for the marks is obtained in Montenegro.
Your usual Marks & Clerk contact will be able to advise further in this regard. Alternatively contact Mike Shaw at mshaw@marks-clerk.com.