Industrial Designs

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act, since April 27, 1992.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 27, 1992.
– Locarno Agreement Establishing an International Classification for Industrial Designs, since April 27, 1992.
– Hague Agreement Concerning the International Registration of Industrial Designs, Stockholm Act since December 30, 1993, and Geneva Act since December 9, 2009.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.

Filing

Applicant: the author 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 conventions, agreements or on the basis of reciprocity.

Kinds of protection: three-dimensional and two-dimensional designs.

Registrability: a design is granted for a three-dimensional or two-dimensional 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: appearance of a product or a part of a product which does not correspond to the definition of design under the Law; designs which are not new or do not have individual character; those applied for registration by a person that was not entitled to do so; those that are in conflict with a design which has been made available to the public after the date of filing, resp. priority of the application, but is protected from the date prior to the said date; those which infringe industrial property rights or copyright; those which contain an official coat of arms, flag or emblem, name or abbreviated name of a country or international organization or an imitation thereof, except with the consent of the competent authority of such a country or organization; those incorporating a distinctive sign whereas the law governing that sign confers on the right holder of the sign the right to prohibit such use; those whose publication or use would be contrary to public order or morality.

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. An exception is made for designs, which became available to the public not earlier than twelve months before the date of filing the application.

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

Series applications: one design application can comprise up to one hundred designs if they belong to the same class of the Locarno Classification.

Territory covered: Serbia.

Filing requirements for an application (to be sent to resident agent):
1. Specification of the design without claims, but the novelty has to be pointed out in the specification;
2. Photographs or drawings in duplicate, max. size 16 x 16 cm;
3. The applicant’s declaration on the legal basis for filing the application in his name (can be filed subsequently);
4. Priority certificate, if any;
5. Power of attorney, not legalized (can be filed subsequently).

Electronic filing: possible (reduced filing fee). 

Electronic signatures: are accepted provided that they are certified by a Certification Service Provider listed on the eIDAS Trusted List (https://webgate.ec.europa.eu/tl-browser/#/).

Examination Procedure

Examination: (1) formal examination: as to completeness and formal requirements and (2) examination of suitability for design protection.

Application kept secret: from the date of application until registration.

Opposition: not provided for. Interested persons can notify the IP Office that the application for a design does not fulfill the legal requirements and submit evidence in support.

Provisional registration: not provided for.

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

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

Transformation: during the whole examination procedure the applicant may file a request for transformation of his application into a patent application or into a petty patent application.

Urgent procedure: provided for in cases of design infringement at the request of the court or market inspection or customs authorities.

Restoration: possible by reinstatement to the former condition, the request has to be filed within three months from the receipt of the decision.

Appeals: the decision of the IP Office can be appealed within fifteen days from the receipt of the decision. Against the decision on appeal it is possible to initiate an administrative lawsuit with the Administrative Court (within thirty days from the receipt of the decision).

Granting

Delivery of document: approximately one to two years after filing.

Beginning of protection: from the date of filing.

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

Annuities: for the first five years of protection, the annuities are paid upon the invitation of the Intellectual Property Office. Thereafter, the maintenance fees are paid on the owner’s own initiative, in five-year intervals counting from the filing date. Grace period: six months, with 50% fine.

Marking of registered goods: not compulsory.

Text of marking: not provided for.

Working: not compulsory.

Amendment of issued design: not feasible.

Corrections: possible to correct typographical errors.

Modification of Protection after Registration

Rights of prior user: a prior user has the right to request the court to declare him the holder of a pending application/registered trademark, filed/registered in the name of a third party, provided that this mark was a well-known designation of his goods or services before the third party applied for registration of the same mark covering the same or similar goods or services. The lawsuit cannot be filed after a period of five years from the registration of the trademark.

Compulsory license: not provided for.

Expropriation: not provided for.

Invalidation: a trademark can be invalidated if it is established that the conditions for granting the trademark were not fulfilled at the time protection was granted. The request can be filed with the IP Office during the whole period of trademark duration. The only exception is made for the owner of an earlier trademark or earlier IP right, which cannot act against a later trademark, if he has not challenged its use in the five years preceding the invalidation request and if there has been no bad faith on the part of the owner of a later trademark (acquiescence). Invalidation request will be refused if the owner of the earlier trademark did not use his trademark in the five years preceding the invalidation request, unless the owner of the later trademark acted in bad faith.

Cancellation: third parties can request cancellation of the trademark that was not used, that became a generic term, that became confusing with respect to the origin, kind, quality or other characteristics of goods/services, or that became contrary to morality and/or public order.

Validation of lapsed marks: not provided for.

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 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 were involved in infringing activities. In case of a willful infringement, a plaintiff can request up to triple the amount of royalties he would normally receive if the trademark was licensed. The lawsuit 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 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 thirty days from the date of the decision granting the injunctions/securing of evidence). The court is obliged to grant a preliminary injunction in cases where the infringing mark is identical. Fines may be imposed both on a company and company officials. Imprisonment provided for in the Criminal Code.