WHY TRADEMARK REGISTRATION IS IMPORTANT
Originality and distinctiveness in the market are key elements of any successful business. A long-term business with a clear vision implies the parallel development of the identity of the goods or services on which the business is based. For that reason, trademark registration is one of the first steps in the process of brand protection. After all, a trademark is the intellectual property of its owner and may be as valuable as or even more valuable than any other form of property, including real estate.
This is particularly important in online business, where a name, logo, or another verbal or graphic sign is often the only element by which a product or service is distinguished from competitors. In the digital environment, trademark protection is closely linked to the protection of an internet domain name, as well as the prevention of cyber-squatting.
WHAT IS A TRADEMARK AND WHAT TYPES OF TRADEMARKS EXIST
A trademark is a right that protects a sign used in commerce to distinguish the goods or services of one person from the same or similar goods or services of another person.
The subject matter of protection may be a sign consisting of:
- words and slogans;
- letters and numbers;
- personal names;
- drawings and logos;
- colors;
- three-dimensional shapes (including the shape of goods or packaging);
- a combination of the above elements;
- sounds.
Trademarks may be divided into:
- individual trademarks (the most common in practice);
- collective trademarks;
- certification marks.
Protection always relates to specific classes of goods and/or services (under the Nice Classification), which means that it is not possible to register a sign without precisely specifying the goods or services for which protection is sought.
TERRITORIAL SCOPE AND TERM OF TRADEMARK PROTECTION
The basic rule of trademark law is territoriality—rights exist only where they are registered or otherwise recognized. For that reason, an international protection strategy is an important part of business planning, especially in the digital economy where markets often overlap. Timely international protection reduces the risk of conflicts with earlier rights and facilitates expansion into new markets.
In the Republic of Serbia, a trademark is acquired through registration, i.e., by issuance of a decision and entry into the Trademark Register maintained by the Intellectual Property Office of the Republic of Serbia.
A trademark is valid exclusively in the territory of the country in which it is registered. If the owner seeks protection in other countries, separate filings are required (national filings, regional filings—e.g., EUIPO—or international filings through the Madrid System).
The term of trademark protection in Serbia is 10 years from the filing date, with the possibility of unlimited renewals, provided that the renewal request is filed in due time and the prescribed fee is paid.
INTERNATIONAL TRADEMARK PROTECTION
Trademark rights are territorial in nature, meaning that protection applies only within the territory of the country or region where the trademark is registered. If a business operates—or plans to operate—in multiple markets, it is necessary to secure protection outside the Republic of Serbia as well.
There are several ways to obtain international trademark protection.
National applications in individual countries
Protection may be obtained by filing separate applications in each country where protection is sought. This approach is suitable where the interest is limited to a smaller number of markets.
EU trade mark (EUIPO)
A European Union trade mark is registered with the European Union Intellectual Property Office (EUIPO) and provides unitary protection throughout all EU Member States. The advantage of this system is a single application and a single right; however, a potential conflict in one Member State may affect the entire application.
The EU trade mark is particularly relevant for companies operating in the European Union market or planning to expand their business there.
International trademark registration – the Madrid System
The Madrid System, administered by the World Intellectual Property Organization (WIPO), enables the filing of a single international application based on a national or regional trademark, designating the countries where protection is sought.
The advantages of the Madrid System include:
- a centralized application,
- simplified management of a trademark portfolio,
- the possibility of subsequent territorial extension of protection.
It is important to emphasize that an international registration does not constitute a “global trademark”, but rather a bundle of national rights effective in the designated countries.
TRADEMARK REGISTRATION PROCEDURE IN SERBIA
The trademark registration procedure is initiated by filing an application with the Intellectual Property Office.
The application includes:
- a request for the grant of a trademark;
- the sign to be protected;
- a list of goods and/or services (by classes);
- information about the applicant.
The amount of the fee depends on the type of trademark and the number of classes of goods/services. After filing, the Office examines formal compliance and whether the legal requirements for registration are met.
If all requirements are met and any third-party oppositions have not been filed or have been resolved, the applicant pays the fee for the first ten-year term of protection and publication costs, after which the trademark is entered into the Register.
WHAT RIGHTS DOES A TRADEMARK OWNER HAVE
The trademark owner has the exclusive right to use the protected sign for the goods and services for which it is registered.
This includes the right to prohibit third parties, without the owner’s consent, from:
- affixing the sign to goods or packaging,
- offering and placing goods on the market,
- importing, exporting, storing and transiting goods,
- using the sign in advertising and business documentation,
- using the sign in the digital environment.
In the case of a well-known trademark (a mark with a high reputation), protection may be extended to dissimilar goods and services as well.
If a third party uses an identical or similar sign in a manner that creates a likelihood of confusion, the trademark owner has the right to initiate appropriate court and administrative proceedings, including measures before customs authorities, as well as domain name dispute resolution proceedings (e.g., UDRP).
MOST COMMON MISTAKES IN TRADEMARK REGISTRATION
Although the trademark registration procedure is not formally complex, in practice mistakes often occur that may lead to refusal of the application, loss of time and additional costs, and even legal disputes. Preventive legal analysis prior to filing is a key step in brand protection.
The most common mistakes include:
Choosing a descriptive or generic name
One of the most common mistakes is attempting to register a sign that describes the goods or services (e.g., “Best Coffee”, “Super Bakery”, “Fast delivery”). Such signs lack the required distinctiveness and are typically refused. A trademark must enable consumers to distinguish the goods or services of one undertaking from those of others on the market.
Incorrect selection of classes of goods and services
Trademark protection applies only to the classes for which the application is filed (Nice Classification). If the applicant fails to cover all relevant classes, adequate protection may be lacking in key segments of the business. Subsequent expansion of protection requires a new filing and additional costs.
Failure to conduct a prior clearance search (availability check)
Filing an application without first checking for identical or similar earlier trademarks involves significant risk. In the event of a conflict with earlier rights, the application may be refused or become subject to opposition proceedings. A professional clearance search covers national, regional and international registers, as well as market use of signs.
Filing too late
Businesses often invest in marketing, design and brand promotion before securing legal protection. If a third party registers an identical or similar sign in the meantime, serious legal issues may arise, including an injunction preventing the use of the business’s own name.
Registering a domain name without trademark protection
Registering an internet domain name does not create trademark rights. A domain name and a trademark are distinct legal categories. Without a registered trademark, legal protection against cyber-squatting or misuse of the name is significantly weaker and procedurally more demanding.
Insufficient protection strategy
A common mistake is registering only a logo without protecting the verbal element (the name), or vice versa. In practice, it is often advisable to consider a combined protection strategy (word mark, figurative mark, slogan), depending on the business model.
TRADEMARK REGISTRATION AND INTERNET DOMAIN PROTECTION
In practice, trademark registration is often crucial for protecting an internet domain name. In the event of unauthorized registration of a domain name identical or similar to a protected mark, the trademark owner may initiate:
- court proceedings,
- proceedings before competent domain dispute resolution bodies (e.g., UDRP),
- proceedings before national bodies for ccTLD domains.
TRADEMARK AND BRAND – DOES A TRADEMARK PROTECT A “BRAND”?
In practice, the question often arises whether trademark registration protects a “brand”. From a legal perspective, a brand as such is not a legal category prescribed by law; rather, it is a market and marketing concept encompassing reputation, consumer perception, quality, visual identity and market communication. What is legally protected is the sign—i.e., a name, logo, slogan or other element of identity—through trademark registration. In other words, a trademark is the fundamental legal instrument for brand protection, because it enables the owner to prohibit third parties from unauthorized use of an identical or similar sign for the same or related goods and services. Without trademark registration, brand protection is significantly weaker and relies solely on general rules on unfair competition or on proving reputation in commerce, which is procedurally and evidentially more demanding.
COMPREHENSIVE LEGAL SUPPORT IN THE BRANDING PROCESS
A brand is more than a logo or a name—it is a strategic business asset. Trademark registration is the foundation of legal brand protection.
The law office MILIĆ Legal provides services including:
filing applications for domestic and international trademarks,
clearance searches (availability checks),
representation in opposition proceedings,
conducting infringement disputes,
protection related to internet domains,
drafting licence and franchising agreements,
monitoring and renewing registrations.
Special attention is given to preventive protection—risk analysis prior to filing—thereby reducing the likelihood of refusal and subsequent disputes.
FREQUENTLY ASKED QUESTIONS (FAQ):
How much does trademark registration cost in Serbia?
Costs depend on the type of trademark and the number of classes of goods/services. There are fees for filing the application as well as a fee for the first 10-year term of protection. The total amount varies depending on the specific application.
How long does the trademark registration procedure take?
The procedure may take from a few months to more than a year, depending on the workload of the Office and any third-party oppositions.
Is it possible to register only a logo?
Yes. It is possible to register a figurative (graphic) trademark as well as a combined trademark (word + logo).
Is a trademark valid abroad?
No. A trademark is valid only in the country in which it is registered, unless an international or regional filing has been made (e.g., an EU trade mark).
How can I check whether a trademark is available?
Before filing, it is recommended to conduct a clearance search in the relevant registers to check for identical or similar earlier signs.
Can a trademark be assigned or licensed?
Yes. A trademark may be assigned, pledged or licensed, subject to recording the change in the appropriate register.
What if someone already uses a similar name?
If a third party already uses an identical or similar sign for the same or related goods/services, there is a risk of refusal of the application or the initiation of opposition proceedings. Therefore, it is advisable to conduct a prior availability analysis before filing.
Can I lose a trademark if I do not use it?
Yes. If a registered trademark is not used continuously for a period of five years, an interested party may initiate revocation proceedings for non-use.
Can a slogan be protected as a trademark?
Yes, provided that the slogan has distinctive character and is not exclusively descriptive. Generic or purely promotional slogans lacking an individualizing function may be refused.
What happens if someone infringes my trademark?
The trademark owner may initiate court proceedings to prohibit use, claim damages, seek destruction of goods, as well as proceedings before customs authorities or in relation to internet domains.