Designs

– Law on Protection of Designs, published in the Official Gazette of Montenegro No. 80/2010, of December 30, 2010, in force since January 8, 2011, with amendments published in the Official Gazettes No. 27/2012, No. 42/2016 of July 11, 2016, in force since July 19, 2016 and No. 02/2017 of January 10, 2017, in force since July 1, 2017.
– Regulation on the Procedure for Recognition, Changes and Renewal of the Validity of Industrial Design, published in the Official Gazette of Montenegro No. 12/2012 dated February 24, 2012.
– Decree on Ensurance of IP Protection, published in the Official Gazette of Montenegro No. 61/2007 of October 12, 2007, in force since October 20, 2007, with amendments published in the Official Gazette of Montenegro No. 70/2008.

Membership in International Conventions

– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965, continues in Montenegro as of June 3, 2006.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since June 3, 2006.
– Convention Establishing the World Intellectual Property Organization (WIPO), since June 3, 2006.
– Locarno Agreement Establishing an International Classification for Industrial Designs, since June 3, 2006.
– Hague Agreement Concerning the International Registration of Industrial Designs, Stockholm Act, and Geneva Act since March 5, 2012.
– WTO’s TRIPS Agreement, since April 29, 2012.

Filing

Applicant: the designer or his legal successor (individual, firm, company).

Foreigners and nationals not living in the country: must have a local attorney.

Foreigners: have the same rights as nationals, in accordance with international agreements or on the basis of reciprocity.

Registrability: a design is granted for the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation, or the combination thereof. The features of shape or configuration, which are solely dictated by the function or must necessarily be reproduced in their exact form and dimensions in order to permit the function of the product in which the design is incorporated, may not qualify for design protection.

Non-registrable: designs contrary to public order or morality; those which contain trademarks, and the owner of previous rights was entitled to forbid such use; those which contain signs, symbols, badges and armorial bearings from Article 6bis of Paris Convention on Protection of Industrial Property and which contain a State coat of arms, flag or symbol, name or abbreviated name of a country or international organization, religious or national symbol, or an imitation thereof, which represent the unauthorized use of works that are protected under the Law governing copyright and related rights.

Novelty: absolute. A design must be new and must have individual character. A design is new if it was not made available to the public prior to the date of filing the design application or the recognized priority. A design has individual character if the overall impression it makes on an informed user differs from the overall impression produced by any other design made available to the public before the filing date of the design application or the recognized priority. A grace period of twelve months is provided for cases of prior publication by the applicant or his legal successor or a party authorized by the applicant or his legal successor, and for unauthorized publication by a third party.

Priorities: in general, from the filing date of the application; Convention priority: six months, must be claimed in the application; exhibition priority: six months, must be claimed in the application. The certified copy of the priority application has to be filed.

Series applications: allowable if designs belong to the same Locarno class. (There are no restrictions with respect to the maximum number of designs in a multiple application).

Territory covered: Montenegro.

Filing requirements for an application (to be sent to resident agent):
1. Photographs or drawings or design suitable for reproduction;
2. Name of product of which a design is a part or on which it is applied;
3. Description of the design – no longer mandatory. The application may contain a description of the visible characteristics of a representation or sample of the design which may not exceed one hundred words for each design, without citing data concerning the novelty of the design, the individual character of the design, or its technical value;
4. A signed declaration of the designer, or team of designers, or the applicant, that the designer or team of designers do not wish to be named in the application;
5. Priority document, if any (can be filed subsequently);
6. Power of attorney, simply signed; no notarization or legalization is required (can be filed subsequently).

Electronic filing: not available. 

Electronic signatures: are not accepted (only wet signatures).

Examination Procedure

Examination: only formal examination as to completeness and formal requirements.

Application kept secret: from the date of application until registration if the request to postpone the publication of the application for thirty months from the date of filing or priority date of the application is not filed.

Opposition: not provided for.

Provisional registration: not provided for.

Registration: after having established that the design fulfills the formal conditions for protection, the IP Office asks the applicant to pay the fee for the first five years of protection, the publication costs. Upon payment, the IP Office registers the design and publishes the same in the Official Journal.

Amendment of application: not possible if a substantial modification is involved.

Urgent procedure: provided for in cases of design infringement at the request of the court or market inspection authorities or customs procedure, as well as in cases where national application serves as a basis for international registration.

Restoration: possible by continuation of procedure, and restitution into former state- restitutio in integrum. The request for continuation of procedure has to be filed within a term of sixty days from the date of expiry of the term wherein the action should have been performed. A request for restitution into former state has to be filed within a deadline of sixty days from the date of cease of the reason for omission, and cannot be filed after a year has expired from the date of omission. In the request for restitution, the applicant must explain the circumstances causing the omission.

Appeals: the decision of the IP Office cannot be appealed, but it is possible to initiate an administrative lawsuit with the Administrative Court (within twenty days from receipt of the decision).

Granting

Delivery of document: about twenty-four months (in paper format).

Beginning of protection: from the date of filing.

Duration: twenty-five years from the date of filing the application.

Unregistered design rights: duration of three years from the moment when the design is first made available to the public in some manner.

Annuities: payment of the first five years of design protection is made upon invitation of the Intellectual Property Office. The design is renewed in five-year periods.

Annuity grace period: can be paid with 50% fine within six months from the due date.

Working: not compulsory.

Amendment of issued design: not feasible.

Corrections: possible to correct typographical errors.

Modification of Protection after Registration

Disputes about ownership: a lawsuit can be filed with the court to establish the right to the design within three years from the date of publication of the registration of the industrial design in the Official Gazette, unless the defendant acted intentionally, in which case the lawsuit can be filed for the entire duration of the protection of the industrial design.

Dispute about authorship: the author can request, by filing a lawsuit with the competent court, to be declared an author and recorded as such in relevant documents and registers.

Opposition to registered designs: not provided for.

Invalidation: a design can be invalidated as a whole or partially if it is established that the conditions for granting the design protection were not fulfilled at the time protection was granted. The request can be filed with the competent court during the whole duration of a design.

Assignment: provided for design registrations; contract must be in a written form and registered to take effect vis-à-vis third parties.

Licenses: provided for designs; contract must be in a written form and registered to take effect vis-à-vis third parties.

Compulsory license: not provided for.

Expropriation: not provided for.

Validation of invalidated designs: not possible.

Infringement and penalties: the court can be requested to prohibit the activities which constitute infringement, to order the destruction of the infringing goods and/or equipment for the production of infringing goods, to grant indemnification, to order the publication of the judgment at the expense of the infringer, and to order the infringer to provide information about third parties which participated in infringing activities. The lawsuit for request to prohibit the activities which constitute infringement must be filed within a period of five years from the date of increment (in case the plaintiff proves that the infringer acted intentionally, claim may be filed for the entire duration of protection). The lawsuit for request to order the destruction of the infringing goods and/or equipment for the production of infringing goods has to be filed within a period of five years from the date of infringement. The lawsuit for granting indemnification has to be filed within a period of three years from the date the plaintiff learned about the infringement and the identity of the infringer, but not later than five years from the date of the infringement. Preliminary injunctions and measures to secure evidence are provided for (can be requested in a lawsuit, exceptionally even earlier, but the lawsuit must be filed within twenty working days or thirty-one calendar days (whichever period expires later) from the execution of the injunctions/request for securing of evidence).

Pledge, enforcement, bankruptcy: at the request of the pledgee or pledger, the pledge is registered in the IP Office Register; the court that enforces execution shall inform the IP Office of initiated proceedings against the design ex officio for the purpose of recordal in the IP Office Register; pledge and enforcement are effective vis-à-vis third parties upon recordal in the Register; at the request of the competent court, information on bankruptcy proceedings is entered into the Register. Above-mentioned also applies to applications for design registration.