LOCATIONS

The New Montenegrin Law on Patents entered into force on August 6, 2015. The New Law on Patents was published in the Official Gazette of Montenegro on July 29, 2015 (“Official Gazette”, no. 42 of July 29, 2015).

The new Montenegrin law on Patents seeks to harmonize the national patent legislation with EU legislation. Some of the most important development in new Montenegrin Patent Law relate to:

• substantive examination –patent owners will have to submit proof of patentability before the end of the 9^thyear of validity, since the Montenegrin IPO does not conduct substantive examination (Article 46)
• proof of patentability is a certified copy of the substantive examination performed by an IP Office signed up to the PCT agreement in accordance with Article 32 or performed by another IP office that has signed a cooperation agreement with the Montenegrin IPO (Article 47)
• revalidation of national Serbia and Montenegro State Union patents within a period of 6 months from the entering into force of the new Patent Law (Article 161)
• revalidation of European Patents extended to Serbia prior to March 1, 2010 (the date on which Montenegro and EPO signed an agreement) (Article 162) clarification of the procedure for obtaining a Supplementary Protection Certificate (SPC) (Article 87)
• provisions with respect to court actions

The New Trademark Law entered into force on December 16, 2010.

Montenegrin Trademark Law entered into force on December 16, 2010. However, since its enactment the Trademark Law has undergone significant changes, through the Law on Amendments to the Trademark Law which entered into force on August 9, 2012 and the latest Law on Amendments to the Trademark Law, which entered into force on April 19, 2014. The 2012 Law on Amendments governs international trademarks and their transformation into national registrations, filing opposition and the deadline for filing opposition against international trademarks, registration of international trademarks, vulnerability for non-use, etc. The most recent Law on Amendments is enacted in order to harmonize Montenegrin Trademark Law with the EU legislation. To be more precise, the provisions of Montenegrin Trademark Law in force through the Law on Amendments are aligned with Directive 2008/95/EZ.  Therefore, the latest Law on Amendments should improve the status of well-known trademarks and those with a reputation in Montenegro, while at the same time it introduces the possibility of cancelling trademarks that became generic and no longer have the necessary distinctiveness. Furthermore, beside changes concerning lawsuits and Court proceedings, it is important to mention that the Law on Amendments prescribes the withdrawal from the market, seizure and destruction of goods that infringe somebody’s intellectual property rights. Consequently, according to the provisions of the Law on Amendments, the Trademark Holder is entitled to claim damages, while monetary fines for trademark infringement are explicitly prescribed. The most important provisions of the Law on amendments from 2016 were of terminological character, which was helpful for more precise interpretation of the Trademark Law. Also, Law on amendments from 2016 introduced possibility for Licensee to file the opposition claim (of course, with prior approval of the Trademark Holder), as well as for the holder of the personal name, portrait, copyright or other industrial property rights. Finally, the most recent amendments of the Trademark Law from 2017 will change the current way of filing appeals – namely, up to now, appeals were filed before the Ministry of Economy, as the second instance, while from the moment of enactment of the Law on Administrative Procedure, all appeals will have to be filed before the Administrative Court.

Conventions

• Paris Convention
• Madrid Agreement
• Madrid Protocol
• The Bern Convention for the Protection of Literary and Artistic Works
• Hague Agreement
• Nice Agreement
• Locarno Agreement
• Lisbon Agreement
• Budapest Treaty

1. The Patent Cooperation Treaty Trademark Law entered into force on December 16, 2010
2. The Patent Law entered into force on November 7, 2008
3. The Law on Legal Protection of Industrial Design entered into force on January 8, 2011
4. The Copyright and related Rights Law entered into force on July 29, 2011
5. The Geographical Indications Law entered into force on September 1, 2008
6. The Law on protection of topographics of Integrated Circuits entered into force on December 21, 2010

Trademarks

• Filing the Application – Requirements
• Registration Procedure
• Opposition
• Duration
• Recording changes in the Register

Patents

• Filing a Conventional Application – Requirements
• PCT Applications– International applications may be filed with the International Bureau of the World Intellectual Property Organization, as receiving office under the Treaty.  Only Montenegrin citizens, people residing in Montenegro and companies that have their seat in Montenegro are allowed to file PCT applications before the national IPO. Any international application in which Montenegro has been designated or elected for the granting of a national patent, shall be deemed to be the request for the extension of the European patent to Montenegro and the EPO shall act as designated or elected Office under the Treaty.
• Extension of the European Patent – requirements
• Time limits for filing the Application for the Extension of the European Patent
• Duration
• Recording changes in the Register

Industrial Designs

• Filing the Application – Requirements
• Registration Procedure
• Duration
• Recording changes in the Register

Trademarks

Filing the Application – Requirements

• Full name and address of the Applicant
• Representation (outlook) of the Mark
• List of Goods and Services according to the Nice Classification 11^thaddition (Classes 1-45). However, due to the information we received from the local IPO, the 11^th Edition of the Nice Classification should be in use from January 1, 2017 but the same is still under preparation
• Priority date, country and number and the original Priority document which can be submitted subsequently within three months from the Application date along with a certified translation into the local language. This term cannot be extended
• Power of Attorney simply signed in the name of the Applicant. There is no need for legalization or notarization. Power of Attorney can be submitted subsequently within 60 days from the date of receipt of the Official Invitation from the Office

Registration Procedure

• The Application is filed with and examined by the Intellectual Property Office of Montenegro
• The IP Office examines absolute grounds for refusal
• The registration procedure takes approximately 12 months from the application date

Opposition

• Opposition can be filed within 90 days as from the publication date of the application
• The deadline of 90 days for filing the opposition against national trademark applications should be counted as from the date that follows the date of publication of the Intellectual Property Gazette of Montenegro. The deadline of 90 days for filing the opposition against International Registrations should be counted as from the first day of the month that follows the date of publication in the WIPO Gazette

Duration

• Upon payment of the ten-year protection fee, the Trademark is valid for 10 years from the application date
• Upon payment of renewal fees the Trademark will be extended for a further 10 years (this action can be repeated an unlimited number of times)
• The renewal fees can be paid during the last six months of the previous ten year protection period or up to six months after the expiration date with a fine of +50% of the renewal fees

Recording changes in the Register

• Assignment of Rights Requirements

  • • Power of Attorney, simply signed in the name of Assignor
    • Power of Attorney, simply signed in the name of Assignee
    • Assignment Document signed by the Assignor and the Assignee. The original Assignment Document or a certified copy of it must be submitted to the local office

• Change of Name Requirements

  • • Power of Attorney indicating the new name, simply signed by a representative of the Company

• Change of Address Requirements

  • • Power of Attorney indicating the new address, simply signed by a representative of the Company

Patents

Filing a Conventional Application – Requirements

• Name and address of the Applicant
• The name and address of the inventor(s) or a statement that inventor does not wish to have his name mentioned in the application (statement can be submitted within 3 months as from the application date)
• Priority date, country and number
• Description of Patent
• Patent Claims
• Drawings (if any)
• Abstract – summary of the invention
• Power of Attorney simply signed by the Applicant – can be submitted subsequently, within 60-90 days as from the receipt of the official invitation
• Priority document – can be submitted subsequently, within 3 months as from the application date along with certified translation into the local language. This term cannot be extended
• The Application is to be filed within one year as from the priority date
• Translation of description, claims and abstract into local language, can be filed subsequently

Extension of a European Patent – requirements

• As from March 1, 2010 it is possible to designate Montenegro
• B1 Patent Specification
• Power of Attorney, simply signed in the name of the Applicant. There is no need for legalization or notarization. POA could be submitted subsequently, within 90 days
• Translation of patent claims into local language
• For those European Patents that were filed prior to March 1, 2010 the special rule is prescribed – in case Serbia was designated and the fees for extension were paid for Serbia, it is possible to file a claim before the IPO of Montenegro for issuance of the Validity Certificate – requirements are:

1. 1. 1. The copy of request for the entry of the extended european patent into the Register of  patents filed before the IPO of Serbia
      2. B1 Patent Specification
      3. Power of Attorney, simply signed in the name of the Applicant
      4. Translation of patent description and claims into local language

Time limits for filing the Application for the Extension of the European Patent

• The Application for the Extension of European Patent is to be filed within 3 months as from the date of publication of grant of the European patent

Duration

• 20 years from the application date for conventional Patents
• 20 years from the International filing date for the National Phase of PCT patents
• 20 years from the European filing date for the Applications for extension of European Patents
• The protection fees are to be paid annually, prior to the expiration date of the year for which the protection fees have been paid or six months after the expiration of the protection period at the latest, with a +50% fine

Recording changes in the Register

• Assignment of Rights Requirements

  • • Power of Attorney simply signed by the Assignor
    • Power of Attorney simply signed by the Assignee
    • Assignment Document signed by the Assignor and the Assignee. The original Assignment Document or a certified copy of it must be submitted to the local office

• Change of Name Requirements

  • • Power of Attorney indicating the new name, simply signed by a representative of the Company
    • Extract from the Register of Companies showing the change of name or Statement from the Secretary of State showing the change of name or any Public Document showing the change of name

• Change of Address Requirements

  • • Power of Attorney indicating the new address, simply signed by a representative of the Company
    • Extract from the Register of Companies showing the change of address or Statement from the Secretary of State showing the change of address or any Public Document showing the change of address

Industrial Design

Filing the Application – Requirements

• Name and address of the Applicant
• Name and address of the author or a declaration that the author chooses not to be mentioned in the application
• Information regarding the number of designs the protection is requested for
• Full and short title of the industrial design
• A two-dimensional presentation of the designs for which protection is sougth (photograph or a graphic presentation of the product for which protection is requested, 6 depictions per design are allowed)
• Legal Basis (Declaration) for filing the application, if the application is not filed in the name of the author. The Legal Basis simply has to be signed by a representative of the Applicant
• Priority date, country and number and the original Priority document which can be submitted subsequently within three months from the Application date along with a certified translation into the local language. This term cannot be extended
• Power of Attorney, simply signed in the name of the Applicant. The POA can be submitted subsequently within 30 days from  receipt of the Official Invitation

Registration Procedure

• Industrial Design Applications are examined by the Intellectual Property Office (formal requirements only). If the application meets the prescribed requirements, the Office will issue the Decision to grant
• The fees for the first five years of protection are payable once for the five year period
• Upon the payment of renewal fees, the Design will be extended for a further 5 years (this action can be repeated a few times, since the Design duration is 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 +50% of the renewal fees

Duration

• 25 years from the Application Date

Recording changes in the Register

• Assignment of Rights Requirements

  • • Power of Attorney simply signed by the Assignor
    • Power of Attorney simply signed by the Assignee
    • Assignment document signed by the Assignor and the Assignee. The original Assignment Document or a certified copy of it must be submitted to the local office

• Change of Name Requirements

  • • Power of Attorney indicating the new name, simply signed by a representative of the Company
    • Extract from the Register of Companies showing the change of name or Statement from the Secretary of State showing the change of name or any Public Document showing the change of name

• Change of Address Requirements

  • • Power of Attorney indicating the new address, simply signed by a representative of the Company
    • Extract from the Register of Companies showing the change of address or Statement from the Secretary of State showing the change of address or any Public Document showing the change of address

This text is for informational purposes only and should not be considered as legal advice. Should you require any additional information, feel free to contact us.