Montenegro - Revalidation of Serbian IP registrations
As previously reported, the Montenegrin Intellectual Property (IP) Office was inaugurated on 28 May 2008. Please refer to our previous articles on this website for further details. The below discussion relates to recent developments in the laws of Montenegro.
The new trade mark law entered into force on 16 December 2010.
Prior to the new law entering into force, national registrations in Serbia registered prior to 28 May 2008 remained valid in Montenegro until the next renewal date. However, the new law requires owners of Serbian trade marks registered prior to 28 May 2008 to be revalidated in Montenegro in order to remain in force.
The deadline for revalidating Serbian registrations in Montenegro is 16 December 2011. In order to do so, it is necessary to obtain a certificate of validity from the Serbian IPO, to be filed in Montenegro. Once registered, Serbian trade marks which have been revalidated in Montenegro will retain the same registration and renewal dates as the registrations in Serbia.
If you would like us to attend to the revalidation of any Serbian registrations in Montenegro, we would stress that we require your instructions by 16 November 2011 at the very latest.
Regarding patents, all national Serbian patents registered prior to 28 May 2008 automatically became valid in Montenegro, without any need for revalidation, and these patents preserved the same registration number. In order to keep them in force in Montenegro, it was simply necessary to submit the original Serbian Validity Certificate and to pay annuities directly before the the IPO of Montenegro.
Regarding designs, a new Law on the Protection of Industrial Designs entered into force on 8 January 2011 in Montenegro. According to the provisions of the new Law, all national designs registered before the IPO of Serbia prior to 28 May 2008 must be revalidated in Montenegro prior to 8 January 2012, unless some legal action (such as payment of annuities, recordal of any change, claim for issuance of Montenegrin Validity Certificate, etc.) was taken directly before the IPO of Montenegro in the period between 28 May 2008 (the date of opening of the IPO of Montenegro) and 8 January 2011.
In order to file claims for entry into the Design Register for those Serbian designs that are eligible to be revalidated in Montenegro, it is necessary to submit the Serbian Validity Certificate and a Power of Attorney, simply signed in the name of the owner of the design (there is no need for legalization/notarization). Once these designs are revalidated, the IPO of Montenegro will publish them in the Intellectual Property Gazette of Montenegro. Also, respective Decisions on entry will be issued, along with Montenegrin registration numbers (the application number will remain the same as that accorded in Serbia).
Furthermore, according to the provisions of the new Law on the Protection of Industrial Designs, renewal fees should be paid once for a 5 year period, and not annually as was prescribed by the former Law. Renewal due dates are calculated from the application date (which will remain the same as that in Serbia, for revalidated Serbian designs). Namely, on grant of a design registration, the proprietor must pay protection fees for the first 5 years. Once the first five-year term has expired, it is possible to renew the registration for further periods of five years, up to a maximum term of 25 years from the application date. The renewal fees can be paid during the last six months of the previous five-year protection period, or up to six months after the expiration date with a fine of 100% of the renewal fees.
If you have any further questions, please do not hesitate to contact us.
29th September 2011
Montenegro - Update
The IP Office of Montenegro has published a draft Regulation stated that the deadline for re-filing pending Serbian cases will be extended from 28 November 2008 to 28 May 2009.
Furthermore, we understand that International Registrations designating Serbia, and filed between 3 June 2006 and 4 December 2006, will be automatically extended to Montenegro, provided that the Serbian authorities have confirmed that the International Registration is in force in Serbia.
Please note that these amendments are not yet officially confirmed and published. Further information will be published on our website as soon as it has been received.
21st October 2008
Montenegro - Intellectual Property Office has now opened
The IP Office in Montenegro opened on 28 May 2008, and is now operational and accepting new applications.
It will not be necessary to file for revalidation of any Serbian registrations that were registered prior to 28 May 2008, as these will automatically be valid in Montenegro until their next renewal date. However any changes to be recorded, or maintenance of these rights, will need to be effected separately in both Serbia and Montenegro.
Regarding Serbian applications that were still pending as at the cut off date of 28 May 2008, these will need to be applied for and examined in Montenegro. A copy of the Serbian application as filed will need to be submitted as evidence with the application in Montenegro, whereupon the Montenegrin application will be afforded the Serbian application/priority date.
To file a new national application we will require a Power of Attorney to be simply signed by an authorised signatory of the applicant company.
If you require a re-application of a pending Serbian application to be filed in Montenegro, we will need to have a copy of the Serbian application to evidence the filing date. Our associates can obtain this directly from Serbia, but we will of course need you to provide us with the Serbian application number.
28th May 2008
Montenegro - Opening of the Intellectual Property Office - 28 May 2008
The Intellectual Property Office of Montenegro will be inaugurated on 28 May 2008, and is supposed to become operational between 29 May 2008 and 2 June 2008.
Validity of Registered Serbian National IP Rights:
All national Intellectual Property rights registered in Serbia prior to the inauguration of the Montenegro IP Office will automatically be valid in Montenegro. Although it is probable that the Montenegro IP Office will require IP holders to submit written proof of validity of their rights in Serbia on the date of inauguration of the Montenegro IP Office, there will be no formal need for a full revalidation procedure. We should have the details of the procedure involved once the IP Office of Montenegro is inaugurated.
Validity of Pending Serbian National IP Rights:
National Intellectual Property rights applied for in Serbia, which have not been registered prior to the inauguration of Montenegro IP Office, will have to be re-applied for in Montenegro within a period of six months in order to maintain the Serbian priority date. Subsequently, these rights will be examined and registered locally in Montenegro.
9th May 2008