Trade and Service Marks

– Law on Industrial Property, in force since February 23, 2009.
– Regulation on Trade Mark, in force since July 24, 2009.

Membership in International Conventions

– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since September 8, 1991.
– Convention Establishing the World Intellectual Property Organization (WIPO), since September 8, 1991.
– Madrid Agreement Concerning the International Registration of Marks, since September 8, 1991.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since September 8, 1991.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since August 30, 2002.
– WTO’s TRIPS Agreement, since April 4, 2003.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since May 26, 2010.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act, since October 6, 2010.
– Singapore Treaty on the Law of Trademarks, since October 6, 2010.

Filing

Applicant: individuals and legal entities.

Foreigners: must appoint a registered attorney in North Macedonia.

Protection of foreigners: they enjoy the same rights as nationals, in accordance with international contracts, conventions or on the basis of reciprocity.

Kinds of protection: trade and service marks, collective marks; certification marks; word marks, device marks and combinations thereof.

Not registrable: a mark (1) which is contrary to law and morality; (2) which cannot be represented graphically; (3) which is not suitable for distinguishing goods or services; (4) which merely designates the kind of products or services, or the purpose for which they serve, the time, the price or the method of production, quality, quantity, weight, name of place or geographical origin; (5) which is common for certain types of goods or services; (6) which exclusively consists of a shape defined by the kind of goods, a shape of goods necessary to obtain a specific technical result or a shape giving substantial value to goods; (7) which may, by its form or content, create confusion in the market, and in particular, mislead the average consumer; (8) which contains or consists of a geographic sign which serves to signify wines or other strong alcoholic drinks, if the reported sign refers to wines or alcoholic drinks which are not from that geographical area; (9) which bears official signs or hallmarks for controlling or guaranteeing quality or imitations thereof; (10) which contains a national coat of arms or other public coat of arms, flag or emblem, name or abbreviated name of a country or an international organization, as well as imitations thereof, according to Article 6ter of the Paris Convention, except with authorization from the competent authority of the country or organization; (11) which contains the name or abbreviation of that name, the coat of arms, flag, emblem or other official symbol of the Republic of North Macedonia, as well as their imitations, except with authorization from a competent state administrative body; (12) which contains or imitates figure or name of a historical or dead eminent person from the Republic of North Macedonia, except with authorization from a competent state administrative body; (13) which contains or imitates name, shape or other recognizable part of protected cultural inheritance of the Republic of North Macedonia, except with authorization from a competent state administrative body; (14) which contains religious symbols or imitations thereof.

Collective (association) marks: may be registered.

Service marks: may be registered.

Certification marks: may be registered.

Classification: international; one application may cover several classes.

Priority: six months according to the Paris Convention.

Territory covered: the Republic of North Macedonia.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (no legalization);
2. List of goods and services;
3. 10 prints (not necessary for word marks), max. size: 8 x 8 cm;
4. For collective marks, a document granting a right to use the collective mark;
5. Priority document (if any), to be filed within three months of the filing date.

Electronic filing: not available. 

Electronic signatures: accepted for the POA.

For a change of name:
1. An official document/extract issued by the Companies Register or other relevant institution (must be in original or a certified copy and notarized);
2. Power of attorney, simply signed.

For a change of address:
1. Power of attorney, simply signed.

Examination

Formal examination: as to the formal correctness and completeness of the application and absolute exceptions to protection. 

Disclaimers: not available.

Publication: a trademark application, complying with the prescribed requirements, shall be published in the Official Gazette.

Third party intervention: once the application is published, any legal or natural person may send to the Office written intervention explaining that the use of that sign is contrary to the public order or morality for which he considers that the filed sign may not be granted. The intervention shall be sent, by the Office, to the applicant, who may provide answers to the suggestions.

Opposition: can be filed within ninety days after the publication by the owner of an earlier mark on relative grounds.

Amendments: the mark cannot be modified or the list of goods extended.

Granting

Granting: if no opposition was filed or if the Office decides that the opposition is not justified, a decision of grant is issued. The data is then published in the Official Gazette, and a registration certificate issued (in paper format) not later than six months from the date of publication of the trademark.

Duration: ten years from the filing date.

Renewals: for further periods of ten years, prior to the corresponding anniversary of the filing date. Grace period: three months with 25% fine fee; further six months with 100% fine fee.

Use: the owner of the mark must use the mark. Non-use within five years may lead to cancellation.

Licenses: exclusive and non-exclusive; must be registered at the Office.

Division: possible.

Modification of Protection after Registration

Right of prior user: right to the trademark has no effect to other persons who, at the time of application, have already used or made the necessary arrangements for using it on the territory of North Macedonia.

Infringement: legal action against infringement of rights should be started in court within three years after the infringement, and not later than five years from the day of the infringement.

Nullification: a trademark will be proclaimed null and void if it is established that the conditions for granting the trademark right did not exist (e.g. existence of an identical or similar trademark, or if the trademark was unsuitable for protection for any other reasons). A trademark may be announced as null and void permanently during the time of protection ex officio or if proposed by the party concerned. The proposal for announcing the void decision for recognizing the trademark right may not be submitted by a holder of an earlier registered trademark, if during five subsequent years prior to submitting the proposal he was aware of the utilization of the later trademark.

Cancellation for non-use of a mark: after five years of non-use following registration or the last serious use at the request of an interested party.

Validation of invalidated mark: if a mark lapses due to non-payment of fees, the owner can, within the period of one year, request that the mark be registered again; if the renewal fee is not paid by the owner and a license agreement is registered at the Office, the Office invites the holder of the license to pay the fee within the period of six months.