Protecting and registering a trademark are essential steps to secure brand usage rights, protect intellectual property, and maintain a company’s identity. Trademark registration provides legal security for your brand, preventing competitors from using similar symbols, signs, or words that might confuse consumers. This allows trademark holders to build brand recognition and value without fearing infringement by other companies.
By registering a trademark, one gains exclusive rights to its use, reducing the risk of market share loss and damage to reputation due to misuse by competitors. In addition to protection within Serbia (i.e., national protection), a trademark can also be registered internationally, which is essential for companies operating in foreign markets. This article will guide you through the process of trademark registration in Serbia, the conditions that must be met, and all relevant steps.
What is a Trademark?
A trademark is a recognizable symbol, word, image, slogan, or combination of these elements used to distinguish a company’s goods or services from similar products or services on the market. For example, well-known brands such as “Nike,” “Coca-Cola,” or “Apple” have protected trademarks representing their goods or services and allowing consumers to recognize them.
According to the Trademark Law of the Republic of Serbia, a trademark is defined as a right protecting a sign used in commerce to distinguish the goods or services of one natural or legal person from similar goods or services of another. This legal definition provides a clear framework for what can be registered as a trademark and the rights the law protects.
Functions of a Trademark
Registering a trademark provides the owner with numerous significant advantages. A trademark is not only a symbol of recognition but also has several key functions essential for business:
- Distinguishing Products and Services – The primary function of a trademark is to help consumers recognize products or services of a particular manufacturer compared to the competition. This allows consumers to choose products or services they know and trust.
- Advertising Function – A trademark plays a crucial role in marketing and promotion. Through advertising campaigns, a trademark becomes synonymous with quality, reliability, and other characteristics that attract consumers.
- Guarantee Function – A trademark guarantees the quality of the products or services it represents. When consumers recognize a trademark, they know what to expect from the brand.
- Investment Function – As intellectual property, a trademark becomes a valuable company asset. Successful brands with protected trademarks often reach high market values.
What Can Be Registered as a Trademark?
The Trademark Law allows for various types of signs to be registered as trademarks, including:
- Words (standard font) – For example, a brand name such as “Pepsi” in a regular font.
- Words (special font) – “Coca-Cola” with a specific font style and color.
- Slogans – Short phrases representing the brand, such as “Just Do It” (Nike).
- Stylized Letters – Such as the stylized “Adidas” logo.
- Images – Visual signs, like the “Apple” logo.
- Drawings – Illustrations or drawings associated with the brand.
- Color Combinations – Specific color combinations representing the brand, like Cadbury’s purple and gold.
- 3D Shapes – Distinctive three-dimensional shapes, such as the shape of the Coca-Cola bottle.
The law also states that certain signs cannot be registered as trademarks, such as:
- A sign that is not suitable for distinguishing in commerce the goods or services of one natural or legal person from those of another;
- A sign that, in its overall appearance, is not suitable for distinguishing goods or services in commerce;
- A sign that is contrary to public order or morality;
- A sign consisting solely of a shape or other feature determined by the nature of the goods, or a shape or feature necessary to achieve a particular technical result, or a shape or feature that gives essential value to the goods; • A sign consisting solely of marks or data that in commerce may serve to designate the type, quality, quantity, purpose, value, geographical origin, production time of the goods, provision of services, or other characteristics of the goods or services;
- A sign consisting solely of marks or data that have become common in everyday language or established trade practices for designating a certain type of goods or services;
- A sign that by its appearance or content could mislead participants in commerce regarding, for example, the type, quality, or geographical origin of the goods, or other properties of the goods or services;
- A sign containing official marks for control or quality assurance or that imitates them, except by written approval of the competent authority;
- A sign containing or imitating the name, abbreviation, coat of arms, flag, or other official emblem of the Republic of Serbia, except with approval from the competent authority;
- A sign that represents or imitates a national or religious symbol;
- A sign containing or consisting of a geographical indication valid in the territory of the Republic of Serbia and relating to the same type of goods or services.
Who Can Be a Trademark Holder?
A trademark holder can be any natural or legal person, meaning that individuals, entrepreneurs, and companies can own trademarks. When a company holds a trademark, it protects its products and services in a specific market, indirectly serving as a means to combat unfair competition.
Trademark registration allows its owners to:
- Use the trademark for marking their goods or services;
- Prevent competitors from using identical or similar marks;
- Use the trademark in their documentation or marketing for promotional purposes;
- Build and maintain consumer trust.
Types of Trademarks
There are different types of trademarks:
- Individual Trademark;
- Collective Trademark;
- Certification Trademark.
Individual Trademark
An individual trademark is the most common type of trademark and refers to a mark that protects the products or services of its holder, whether a company or an individual. With this trademark, the owner has the exclusive right to use it in connection with specific products or services. For example, well-known brands like “Nike” or “Coca-Cola” own individual trademarks that protect their products worldwide.
Collective Trademark
A collective trademark, designated as such in the trademark application, is a mark owned by a legal entity representing a certain form of association of producers or service providers, which can be used by members of that association under conditions prescribed by law. For example, members of a producer association may use a common trademark to indicate that all their products originate from a specific geographical area or meet certain quality standards.
Certification Mark
A certification mark, designated as such in the trademark application, serves to distinguish goods or services certified by the trademark holder from similar goods or services of another natural or legal person that are not certified. A certification mark, which may be used by multiple parties under the supervision of the trademark holder, acts as a guarantee of quality, material, method of production, or provision of services, correctness, or other common characteristics of the goods or services protected by the mark. The holder of the certification mark must allow its use by any party for goods or services that share the characteristics specified in the general act on the certification mark. For example, ecological products may bear a mark guaranteeing they are produced in accordance with ecological standards.
Trademark Registration
Trademark registration is a legal procedure that protects a sign, granting the trademark holder the exclusive right to use it for specific products or services. The registration process includes several steps, enabling owners to protect their brand within certain territories. It is important to note that a trademark is a territorial right, protecting a sign or brand only in the countries where it is registered.
National Trademark Registration
National trademark registration involves protecting a mark within Serbia. This process is a mandatory prerequisite for international registration. National registration protects your brand only within the territory of Serbia but is the first step toward global protection.
International Trademark Registration
If you plan to expand your business into foreign markets, international trademark registration is essential. This process is conducted under the Madrid Agreement, through the Intellectual Property Office. International registration allows you to protect your trademark in multiple countries simultaneously, but the process must begin with national registration.
Trademark Registration Process in Serbia
The trademark registration process in Serbia consists of several important steps. If you wish to successfully register your trademark and protect your brand, it is important to follow these steps:
Trademark Search
Before submitting a trademark application, it is important to search for existing trademarks. The search allows you to avoid potential disputes and ensure that your sign is unique. You can do this by searching the trademark database yourself:
- E-register of trademarks (database of national trademarks)
- Madrid monitor database (international trademark database)
- Vienna classification
However, those databases are more of informative purposes and for accurate data you should submit the request to the Institute for Intellectual Property, together with the proof of paid administrative fee:
- PDF example of a trademark search request
- PDF example of a trademark search request by the owner’s name
Application Submission
When you have conducted a search and ensured that your mark is not already registered, the next step is to submit an application for trademark registration. The application is submitted to the Institute for Intellectual Property and must contain the following elements:
- Completed application for trademark recognition.
- Graphic representation of the trademark you wish to register.
- List of goods or services you want to protect with the trademark (according to international classification).
- Information about the applicant (legal or natural person).
Trademark Registration Fee
Trademark registration involves paying fees to the Institute for Intellectual Property. There are two main types of fees:
- Application Fee – The price depends on the number of classes of goods or services for which protection is sought.
- Fee for Acquiring Trademark Rights and Protection – This fee is paid for a period of ten years, after which the trademark protection can be renewed.
Once the fee is paid and the application is fully submitted, the Institute will publish the application in its official gazette.
Review and Publication Process in the Official Gazette
After you submit your application and pay the appropriate fees, the Institute for Intellectual Property begins reviewing the application. If all formal requirements are met, the application will be published in the Official Gazette. This publication is an important part of the process as it allows interested parties to be informed about your trademark registration request. If no objections are received within three months from the publication of the application, the Institute may grant the trademark and issue a registration decision.
If, during this period, someone files an objection claiming that your trademark is similar to theirs or could cause confusion among consumers, a procedure may occur in which the Institute will decide on the validity of the objection. This part of the process can be complex and lengthy, but successful trademark registration allows you to continue operating with the full right to exclusive use of your mark.
International Trademark Registration
In addition to national registration, many brand owners opt for international trademark protection, especially if they operate in multiple markets. International registration allows for trademark protection in several countries simultaneously and is conducted through the Madrid Agreement and the Madrid Protocol. This international protection system enables you to protect your trademark in up to 130 countries by submitting a single application through the Institute for Intellectual Property of Serbia.
Preconditions for International Registration
To initiate the international registration process, you must first have a valid registered national trademark in Serbia. Once that is achieved, you can submit a request for international registration, which the Institute will forward to the World Intellectual Property Organization (WIPO). The amount of fees for international registration depends on the number of countries where protection is sought, as well as the specifics of the trademark being registered. The process typically takes several months, but after registration, your protection is secured in all selected countries.
Frequently Asked Questions About Trademark Registration
The trademark registration process may seem straightforward, but potential applicants often have a range of questions and concerns. Here are some of the most common questions our clients ask:
A trademark is protected for a period of ten years from the date of application submission. After this period, protection can be indefinitely renewed for additional ten-year periods, upon payment of the appropriate fees. It is important to note that it is necessary to file a renewal request before the expiration of the current period to avoid losing rights.
Yes, a trademark can be canceled in certain situations, especially if it is proven to have been registered in violation of the law, for example, if it lacks distinctiveness, misleads the public, or was registered in bad faith. Competitors or other interested parties can also initiate cancellation proceedings against a trademark.
Yes. The Trademark Law provides for the possibility of cancellation if the trademark is not used within five years from the registration date. This provision was introduced to prevent abuse of the trademark registration system, specifically to stop someone from registering a trademark without the intent to use it, solely to prevent others from using it.
Extending the validity of a trademark is a relatively straightforward process. Before the expiration of the ten-year period, the trademark holder must file a request for the extension of trademark rights, along with payment of the appropriate fee. The extension is granted for an additional ten years, and this process can be repeated indefinitely, as long as the holder wishes to maintain protection.
The “principle of specialty” in trademark law means that protection applies only to the goods and services for which the trademark is registered. This means that the trademark holder does not have an automatic right to protection for all possible products and services, but only for those listed in the registration application. For example, if you have registered a trademark for footwear production, you do not automatically have the right to prevent someone else from using a similar trademark for products in another category, such as electronics or food products.
In trademark law, the term “similarity” refers to the possibility that the mark you want to register may cause confusion among consumers regarding the origin of goods or services. Similarity is assessed not only based on visual aspects but also by sound, meaning, and the manner of use of the mark in relation to specific products or services. A mark can be deemed similar if there is a likelihood that the average consumer would be confused about the origin of the goods or services.
Conclusion on trademark registration
Trademark registration and protection in Serbia is a crucial step for every brand owner, whether it’s a small business or a large corporation. The trademark registration process allows you to legally secure your brand and protect it from unauthorized use by competitors. A trademark plays a key role in brand recognition and success, making its protection at both the national and international levels essential for long-term growth and stability of the business.
Although the trademark registration process may seem complex, the law firm NCR Lawyers, with its experienced team of experts, provides comprehensive support throughout the entire process—from searching for existing trademarks to submitting applications and eventual international protection of your brand. Our law firm specializes in intellectual property and offers personalized advice to ensure that your trademark registration application is successful and that your brand is fully protected.
This article is for informational purposes only and does not constitute legal advice. If you need additional information regarding the topic in question, please feel free to contact us by email at office@ncrlawyers.com or by phone at +381677049551.
