Intellectual property
A guide to the procedure for protecting a logo (trademark) in Serbia – who can register it, what the procedure is and how long the protection lasts.
If it has happened to you that you have invested time, as well as material resources, into designing a logo to mark your goods or services, and you subsequently found out that the same or a similar logo already exists, or if you want to avoid such an unpleasant situation from the outset, this blog will guide you in detail through what a logo is, how it is regulated, and the procedure for protecting it.
A logo is a term used in everyday language; however, you will not find this word in the legislation governing this matter, because in a legal sense a logo is called a trade mark, i.e. a sign. The law governing this matter is Trade Marks Act, and the register before which trade marks are registered is maintained by the Intellectual Property Office (hereinafter: IPO).
Logo registration is important, as it gives you the right to protect your mark (logo), which you use to identify your products and/or the services you provide on the market, thereby building a brand that sets you apart from other brands.
If you register your logo, you obtain the exclusive right to use your logo for the goods and services for which it is registered, you have the right to prohibit an identical or substantially similar sign from being used by another person, as well as potential financial value, since a registered logo is a right that can be disposed of by means of assignment or the granting of a licence for use.
The law stipulates that a logo is a sign that may consist of any signs, in particular words, including personal names, or drawings, letters, numbers, colours, three-dimensional shapes, the shape of goods or their packaging, combinations of such signs or sounds, but under certain conditions:
The applicant for the recognition of a trade mark may be either a natural person or a legal entity engaged in the trade of goods and the provision of services. It is not necessary to submit proof of the performance of economic activity in the trade mark application.
Is there an option for a sole trader to submit an application? A sole trader is a legal form of carrying out business activity which is regulated By Law on Business Companies. The IPO advises that, given the possibility of ceasing a certain business activity and in order to ensure the continuity of the trade mark holder's rights, it is more advantageous to file an application for the recognition of a trade mark as an individual rather than as a sole trader.
A foreign natural or legal person who does not have a residence or registered office in the territory of the Republic Serbia must, in proceedings before a competent authority, be represented by a representative registered in the Register of Representatives kept by the competent authority or by a domestic lawyer.
Although both legal entities and individuals can submit requests for logo registration, to avoid any omission and thus prolong this process, the advice is to engage intellectual property lawyer.
It may happen in practice that before establishing a company you design a logo for it, and then register the company before Business Registers Agency. However, by registering the company in APR, you are only legally registering the company, but that registration has no effect on your logo. Therefore, registering a company with the Business Registers Agency does not grant the right to protect your brand, which must be done exclusively in the prescribed manner before the Intellectual Property Office.
Therefore, before actually registering your sign (logo), it is necessary to check whether the sign you wish to register already exists in the register. It is entirely possible that you have created a sign with which you wish to mark your goods and services, but that another person has already registered such a sign in the IPO register. For this reason, it is necessary to carry out a preliminary check as to whether your sign already exists in the register. That check can be carried out in two ways:
The logo registration procedure is carried out before the Intellectual Property Office in several steps.
The applicant shall submit the application on the appropriate form, along with the payment of the administrative fee.
The Intellectual Property Office examines whether the formal requirements of the filed application are met, and then conducts a substantive examination as to whether such a logo already exists for distinguishing the specified goods and services.
Following certain checks by the IPO, a decision on the registration of the logo is made. At that point, you have a deadline to pay the logo registration fee, and upon payment of the fee, your logo is entered into the register.
An extremely important note regarding logo registration is that by registering a logo you do not automatically acquire the right to use it for all types of goods and services, but rather, during registration, a selection of the goods and services you wish to protect is made. The selection of goods and services is made on the basis of the so-called Nice Classification, which is a document that divides goods and services into different classes.
This is of crucial importance because if you fail to properly classify your goods and services, it may result in you ultimately lacking logo protection for some of the goods you place on the market due to poor classification. Also, it is important to note that the fee may also vary depending on the number of classes of goods and services you wish to classify.
The IP Office states that if there is no fact representing an obstacle to registration, it usually takes 6 months from the date of filing the application to the date of registration. If, on the other hand, the application is irregular, or there are grounds for potential refusal of protection, or the procedure is suspended due to a preliminary question, the procedure may then be extended and last longer than 6 months.
Once you have registered your logo, that right does not automatically last forever, but rather you acquire it for a period of 10 years, not from the date of registration but from the date of filing the application. This right only formally lasts for 10 years, but there is the possibility of extending it for a further 10 years an unlimited number of times, so in reality you can extend this right as many times as you want and have a need for.
It should be borne in mind that the trade mark registration we discussed in this text applies to the territory of the Republic of Serbia, and not abroad. If you want your trade mark to have effect beyond the borders of the Republic of Serbia, then the procedure is somewhat different, as an international trade mark registration is carried out. Therefore, it is best to decide before the registration procedure itself whether you need to register the trade mark only in the territory of the Republic of Serbia, or in other countries as well.
You can also carry out this entire procedure yourself, but bearing in mind the possibility of making mistakes, especially when checking the registrability of a logo as well as properly classifying goods and services into the correct Nice Classification classes, the recommendation is to hire a solicitor who deals with this matter.
If you are planning to register a logo and need professional assistance, the PM Lawyers office can help you from the very beginning until the completion of the entire procedure.
Usually it takes 6 months, and if there are obstacles it can take even longer.
No, by registering a company with the Business Registers Agency, you do not acquire any rights to the logo.
You can register the logo yourself, but foreign nationals must carry out the registration either through a registered representative from Serbia, or a domestic lawyer.
10 years, with the possibility of extension for a further 10 years, an unlimited number of times.
It depends on whether it is registered or not. If it is not, you have the right to apply for your logo. That is precisely why the initial search is of crucial importance.
We help you protect your brand – from checking sign availability and filing the application, to concluding the procedure before the Intellectual Property Office.
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