Effects of International Registration

Montenegrin Intellectual Property Office informs clients and users on the status of international trademarks having effect on the territory of Montenegro:

I

Articles 10 of the Regulation Securing the Implementation of Intellectual Property Rights in Montenegro, has regulated that: ‘’International registrations in conformity with the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as: the Madrid Agreement) or the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter referred to as: the Protocol) completed before 3 June 2006, with the territorial effect in the State Union of Serbia and Montenegro (SCG), shall be valid in Montenegro, should the procedure be executed according to the Rule No. 39 of Common Regulations under the Madrid Agreement and Protocol.’’ Article 11 has further regulated that: ‘’ A mark registered in conformity with the Madrid Agreement or Protocol with the territorial effect in the Republic of Serbia, as of 3 June 2006 or on a later date but prior to 4 December 2006, shall be entered into the registry by the Office of Montenegro, should the holder of such an international registration: 1) file an application for the mark registration with the Office of Montenegro at latest within six months of the date of start-up of the Office of Montenegro, 2) furnish, together with the application for a mark registration, an evidence of the international mark registration with the territorial effect in Serbia and issued by the International Bureau of the World Organization of Intellectual Property (hereinafter referred to as: the International Bureau), and 3) pay a prescribed fee. Mark registrations in conformity with the provisions of par. 1 of this Article shall have effect as of the date of the territorial effect for Serbia, and a mark existence shall be deemed to commence from that date, as well. When registering a mark, all the rights acquired by third persons prior to the registration relating to the use and exploitation of a trademark similar to the protected mark, shall be taken into consideration. The scope of rights, maintenance and validity of a mark registered in conformity with the Madrid Agreement or Protocol shall be subject to the legislation governing the issue of marks.’’ Therefore, Article 10 clearly indicates to the Rule 39 Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement, where Article 11 represents a compromise a legislator harmonized with the International Bureau of the WIPO, as evolved from practice, or application of the integral text of Regulation from 2007. It has been stipulated that there is no continuation of effect for the trademarks in the 6 months’ period from 3rd June until 4th December 2006, since Montenegro gained its independence.[1]

Rule 39 of the Common Regulations, 102.01, deals with the protection of an international registration when a State which had been designated is affected by changes resulting in a part of the territory of that State (“the predecessor Contracting Party”) becoming an independent State (“the successor State”). In such a case, the Successor State may deposit with the Director General a declaration of continuation, the effect of which is that the Agreement, the Protocol, or both the Agreement and the Protocol are applied by the Successor State. In addition, Rule 39(1), where any holder of an international registration with a territorial extension to the predecessor Contracting Party which is effective from a date prior to a date notified by the successor State will receive from the International Bureau a notice. The holder can ensure continued protection of his international registration in the successor State by filing with the International Bureau, within six months from the date of the notice, a request that the international registration continue its effects in the successor State and by the payment, within the same period of six months, to the International Bureau of a fee, the amount of which is specified in the Regulations.

In accordance with the above said Rule, the Government of Montenegro has addressed to the International Bureau of the WIPO, in 2007, par.1 from the Rule 39a, two information notices[2]. We kindly ask our respective clients to download these Information notices, which under Rule 39, gave the deadline of 6 months for right holders to file a request at the International Bureau and all interested clients who acted in accordance with it. The holder had the right to ensure a continued protection of his international registration in the successor State by filing with the International Bureau, within six months from the date of the notice, a request that the international registration will continue its effects in the successor State and by the payment, within the same period of six months, to the International Bureau of a fee, the amount of which is specified in the Regulations. Article 11 of the consolidated version of the Decree, regulated that all international trademarks within the period from 3rd June until 4th December 2006, have their legal validity in Montenegro if, within this period, they were not refused by the Office of Serbia. Therefore, those trademarks within this 6 month’s period were given the legal validity for all international trademarks with the effect in Montenegro, with this compromise, the Government of Montenegro as a legislator, has issued the Information Notice in December 2008[3].

II

International Bureau, in cooperation with the Montenegrin Intellectual Property Office, has taken an obligation, in accordance with the Decree brought by the Government of Montenegro, to inscribe in ROMARIN (International Trademark Information Database) regulated by WIPO, all changes requested by clients for previous trademarks designated on YU, i.e. trademarks which are in the International Register designated with a country code ME under Madrid Agreement and/or Protocol, are the only trademarks valid in the territory of Montenegro.

III

Furthermore, we inform our clients that the new Trademark Law has been enforced on 16 December 2010 (‘’The Official Gazette of Montenegro’’ No. 72/10.) where Article 65 regulates the status of granted rights for trademark which are registered in the state union office of Serbia and Montenegro, i.e. Intellectual Property Office of Serbia. This article does not have any effects, in any manner, on the status of international trademarks being registered by Madrid system valid in Montenegro.

IV

Those holders who have not used this right under Rule 39 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and under Article 11, paragraph 1 of the Regulations on Granting the Implementation of Rights with respect to Intellectual Property, may make a subsequent designation to the territory of Montenegro by paying adequate fees, and thus have the effect of the international registration concerned in this territory, code (ME). However, those international registrations could not benefit from any priority validly claimed with respect to subsequent designations but will have the effect in the territory of Montenegro.