The Law on amendments published in the Official Gazettes of Montenegro Nos. 44/2012, 18/2014, 40/2014, 2/2017 brought numerous changes to the Montenegrin Law on Trademarks (“Official Gazette of Montenegro”, No. 72/2010) (“TM Law”). However, the new Law on Amendments of the Law on Trademarks which was published in the Official Gazette of Montenegro No. 3/2023 on January 10, 2023 and which entered into force on January 18, 2023, introduced significant novelties like no other before. The aim of the recent amendments is to harmonize national legislation with the legislation of the European Union, namely Directive (EU) 2015/2436 of the European Parliament and the Council on harmonization of the legislation of member states on trademarks.
The most significant novelties introduced by the Law on Amendments are as follows:
- deletion of the condition that only a mark which can be represented graphically can be afforded protection as a registered trademark;
- expansion of the list of absolute reasons for refusal and other relative grounds of refusal, i.e., invalidation of a trademark, in the part that refers to the protection of traditional expressions for wines, guaranteed traditional specialties and plant varieties;
- expansion of the scope of rights held by a trademark holder in relation to use of its right, in relation to goods in transit and preparatory actions related to the use of packaging or other means;
- changes in the procedure related to objections filed by third parties and oppositions to trademark registration before the competent authority;
- compliance with the provisions of the Singapore Treaty on the Law of Trademarks (with regard to the continuation of the procedure, restitution in integrum, correction of errors and license);
- the procedure for registration of collective marks has been specified, especially parts related to refusals thereof;
- more detailed calculation of terms for proving the use of international trademarks in opposition, invalidation or cancellation proceedings;
- changes in the proceedings for invalidation/cancellation of a trademark, as well as a change of the competent authority before which the said procedures will be conducted, from the court to the competent administrative body;
- more detailed arrangement of the inspection supervision procedure and the procedure of destruction of temporarily seized goods;
- the provisions of the Law regulating administrative procedure now contain specifics that reflect the obligation to harmonize this area with EU law and international standards and regulate certain issues differently, compared to the provisions of the Law on administrative procedure.
Unlike its predecessors, the new amendments have placed focus on administrative competent bodies regarding the prosecution and enforcement of trademark rights in Montenegro. The aim of this legal document is to ensure greater legal efficiency and legal protection of the Trademark Holder and to fulfil commitments deriving from the EU accession proceedings.
Author: Rajka Vukcevic, Lawyer
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