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IP rights in Serbia, Kosovo and Montenegro

24 June 2008

Intellectual property (IP) rights covering the former Yugoslavia are becoming increasingly fragmented following the end of the Union of Serbia and Montenegro in June 2006 (after Montenegro declared its independence) and the separation of Kosovo from Serbia in February 2008.

As a result, IP owners must take proactive steps to ensure that they are protected in the jurisdictions of interest to them. This newsflash summarises the current status and monitors the deadlines to maintain or extend trade mark rights in these jurisdictions.

Simplistically, rights owners who are interested in the new territories may, depending on the protection they have in place, need to act before 1 October 2008 in Kosovo and 28 November 2008 in Montenegro to ensure they are properly protected.

Serbia

Serbia has succeeded to the treaties that were formerly in force with respect to the Union of Serbia and Montenegro, including the Madrid Agreement and the Madrid Protocol.

Accordingly, IP rights that were protected in the Union of Serbia and Montenegro as of June 2006 remain protected in Serbia without the need for further confirmation or payment.

Applications for IP rights filed after 3 June 2006 in Serbia have effect only in Serbia, including designations of International registrations under the Madrid system.

Kosovo

Before it separated from Serbia in February 2008, Kosovo passed its own IP legislation and established its own Intellectual Property Office in November 2007 whilst still under UN protectorate. The new IP law in Kosovo allows 12 months for re-registering Serbian registered rights already granted and re-filing pending applications as of 1 October 2007. Right holders therefore have until the extended deadline of 1 October 2008 to maintain IP rights in Kosovo.

In order to revalidate Serbian applications or registrations and maintain priority rights in Kosovo by 1 October 2008, rights holders will need to submit certificates of validation for registered rights and certificates for pending applications, together with a request for re-registration/re-filing and a Power of Attorney.

Montenegro
 
The Intellectual Property Office (IPO) of Montenegro opened on 28 May 2008.  Trade mark rights granted in Serbia before 28 May 2008 are automatically valid in Montenegro, without any additional steps being necessary, until the trade mark is due for renewal. However, trade mark holders are advised to request a Certificate of Registration from the IPO in Montenegro as proof of their "Serbian" rights in this new jurisdiction. 

Applications that were pending in Serbia on 28 May 2008 must be re-filed in Montenegro by 28 November 2008 in order to maintain the original Serbian filing date. Such applications will then be examined and registered in Montenegro.

Practical Implications

We advise brand owners who wish to extend, confirm the validation of or file new trade mark applications in these new independent territories to be aware of the respective deadlines of 1 October 2008 in Kosovo and 28 November 2008 in Montenegro to ensure they properly protect themselves in these new jurisdictions.

For further information, please contact Sophie Lachowsky or Mark Holah.

Contacts

France Delord
Mark Holah
John Olsen
Allan Poulter
Rachel Tan

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