If you have already determined that trademark registration is your right choice. You want to know what the next step is, or you are not sure about the object to be protected, the person who can become the trademark holder, the implicit meaning of the procedure and the estimated investment amount. In this blog post, we try to answer the most common customer questions with simple terms and a large number of examples. These questions contact our law firm about this matter.
If you have not decided to register a trademark, but just want to understand the benefits of trademark registration, please proceed to the following 6 reasons why trademark registration is important to your business.
What is a trademark?
A trademark is the right to protect a trademark, and its purpose is to distinguish the goods or services of a natural or legal person from the same or similar goods or services of another natural or legal person in a commodity transaction. 1
If a trademark has been internationally registered in Serbia, it is also considered a trademark. We are in the blog post “International or National Trademark Registration-What is better for your company? .
The trademark may be:
Collective trademarks: trademarks of legal entities representing some form of association of manufacturers or service providers who have the right to use entities that are members of that association; and
Warranty trademark: A trademark used by several companies under the supervision of the trademark owner. It is a professional principle: the pure trademark concept related to trademarks and goods or services contains two inseparable elements: trademarks and goods/services represented by trademarks. The connection between these two elements is called the professional principle.
First of all, this means that as long as the goods/services are defined, trademarks can be protected by trademarks.
The professional principle further means that two different trademarks can protect the same trademark as long as they represent different goods/services. Either way, the more similar the trademarks, the goods/services in one thing must be as distinctive as possible. An exception to this principle is the so-called well-known trademarks. This means that regardless of whether a protection completely different from the goods/services marked by the trademark is required, the same trademark as a well-known trademark cannot be registered. Coca-Cola is an example of a famous trademark.
What do professional principles convey in practice?
According to professional principles, when searching for trademarks that you intend to use trademarks for protection, you must also look at the list of goods/services with the same or similar trademarks. For example, when people see similar trademarks in the national trademark database, most people will miss this step and give up the desired trademark. Despite explanations on the website of the Intellectual Property Office of the Republic of Serbia (hereinafter referred to as “IPO”) and foreign websites, the search process is still complicated.
It should be mentioned that the IPO offers the possibility of making search requests through so-called trademark searches. However, even if you get search results, someone must analyze them professionally. This is because the report on the search of the trademark database did not clearly state: “You can/cannot register the trademark.” When analyzing, you will fully understand the IPO practices and the precedents on meeting the registration standards. In fact, if you are not familiar with the results of trademark database searches and solutions, you may come to wrong conclusions, which may have a negative impact on the brand building process.
Finally, we should mention the IPO statement. The data in the report is only for information and does not represent any opinions or instructions.
What do the standards “similar” and “different” refer to as trademarks in accordance with the law?
These standards are often mentioned in the “Trademark Law”, which is predictable because these standards are intertwined with the concept of trademarks. Therefore, it is necessary to understand these terms correctly, that is, to understand their meaning under the “Trademark Law.”
To illustrate the complexity of this question and how specific techniques determine the correct answer, we will list examples of products that the IPO considers similar (i.e., different).
First of all, to clarify one thing: the fact that certain products are classified into the same category or a broader category does not automatically mean that these products are similar. For example, cakes and meats are classified as foods, but are not considered similar. Chocolate and fruit juice are also different products, even though they are food for human consumption.
On the other hand, all non-alcoholic beverages are considered similar. The same applies to rare or precious metal products, such as gold or silver.
The most important criterion for determining the similarity of a product is the purpose of the product. For example, although footwear and clothing are different commodities in terms of their nature, they will be regarded as similar to each other because they have similar uses. The same is true for medicinal substances and band-aids-they are considered similar because they have a similar purpose (they are designed to treat people). Since hardware and software play a role in performing unique functions (computer operations), although they are not actually innate, they are considered similar.
On the other hand, gold jewellery and costume jewellery are considered competing commodities, which makes them similar to each other in this case.
Given that Serbia is a member of the European Union and is obliged to align its intellectual property laws with EU laws, the IPO monitors EU court practices. This means having a wealth of intellectual property knowledge in the EU.
It is important to emphasize this point, because the answers to questions about similar products or services (not) can be surprising.
For example, the European Court of Justice found that in one case, the categories of savoury biscuits and sweet biscuits were not similar, and also found that the trademark of “FERRO” was not similar to the trademark of “FERRERO”.
In any case, when analyzing the similarity of goods/services, more criteria will be considered, including the nature of the goods/services, purpose, method of use, current or potential purchasers, the usual sales location of these goods and other conditions.
What can be registered as a trademark?
According to the “Trademark Law”, a trademark can be composed of words, slogans, letters, numbers, pictures, pictures, color schemes, three-dimensional forms, combinations of these characters, and musical phrases expressed in musical notes.
Compared with a trademark, what is a brand?
We can agree that a brand is difficult to define, remember that its appearance ranges from trademarks and trademarks to the overall reputation (goodwill) of a particular manufacturer1. The purpose of a trademark is to protect the entire imported product that is invested in brand development. Therefore, even if the trademark only officially protects the trademark, the trademark not only protects the trademark, but also protects the reputation and brand.
Who may be the trademark holder?
Who is the main company owner who decides to register a trademark will become the trademark holder. Should they be natural persons or companies as trademark holders.
Formally, the holder can be a company or a natural person. The answer to this question depends on the specific situation and mainly depends on the owner’s plan. If the owner chooses to become a trademark holder, they will sign a license agreement with their company as a natural person. In other words, the owner grants his company permission to use the trademark.
If the trademark is registered in the company, then the trademark will belong to all members of the company according to its shares. If the company ceases to exist, the owner must transfer the trademark to himself as a natural person with the consent of other members. This process may take place during liquidation, bankruptcy proceedings or immediately before the company’s closure, contract and registration in the IPO.
Generally, if you want to invest in the value of a company, it is recommended that the trademark holder be a company so that the intellectual property rights are reserved for the company.
Serbia, EU candidate country ranked second
One month express immigration to Serbia
The cost is only 4000 Euros.
1 Company establishment + work permit
1 or real estate transfer
2 D Visa Application
3 Application for Temporary Residence
4 Driver's License Application
5 Bank Account Opening
If you have the idea of immigrating to Serbia
Welcome to contact us!
Our contact method is
Whatsapp: +381 606968711
Viber: +381 606968711