Filing and maintaining trademarks in the Western Balkans: what rights holders need to know

The Western Balkans are full of opportunities for brand owners looking to file in a growing region. To build and maintain portfolios here, they must thoroughly understand the laws that govern trademark filing and maintenance across the different jurisdictions.

To renew or refile?

In Albania, Bosnia and Herzegovina, Kosovo, Montenegro and Serbia, trademarks can be renewed from six months before the renewal deadline, with a grace period of an additional six months.

In Croatia and Slovenia, trademarks can be renewed from 12 months before the deadline, and the grace period is also six months.

In North Macedonia, trademarks can be renewed from one year before the renewal deadline, with a nine-month grace period, which is the longest of any Western Balkans country. If the renewal is filed within four months after the deadline, the official fee increases by 25%, and if it is filed from four to nine months after the deadline, the fee increases by 100%.

At the time of renewal, the five-year use period (counted from the time of registration) will have already passed. Unless the mark is still being used, it will often be advantageous for the rights holder to refile rather than renew its mark. There are multiple benefits to this strategy: it allows the rights holder to update its application to better represent how the mark is being used, update the goods and services for which it is registered and make better use of financial resources that it would have otherwise spent on renewing its mark.

In Serbia, renewal certificates are not automatically issued – they must be requested and paid for separately.

Powers of attorney (POAs)

Bosnia, Montenegro and Serbia have the fewest requirements for a POA to be valid: it must simply be signed.

In Slovenia, the full name and position of the signatory at the authorising entity must be noted. The same applies to POAs in Croatia and North Macedonia, with the addition of the signing location.

In Kosovo, just the signatory’s full name, date and place of signing is required for the POA to be valid.

In Albania, a POA must also have a company seal or stamp. In cases where the owner is a natural person, the company seal would not be required, but the POA would still have to be notarised. Otherwise, notarisation is not required in any of the Western Balkan jurisdictions.

Although most filings are now done in electronic format – and most trademark professionals use scanned copies – it is still advisable for the local agent to have the POA on physical file.

Oppositions

All Western Balkan jurisdictions now allow for opposition proceedings – in 2020 Serbia became the last country in the region to adopt an opposition-based trademark system. However, Serbia still retains the right to examine applications on relative grounds for refusal before publication, after which oppositions can then be filed.

In Montenegro and North Macedonia, there is a three-month or 90-day term to file an opposition from the time of publication.

In Serbia, disclaimers for a year-long period used as part of a trademark are not allowed – the use for the year must be justified.

Graphical representation

Trademarks must be graphically represented in Bosnia, Montenegro, North Macedonia and Serbia. However, this is not the case in Albania, Croatia, Kosovo or Slovenia.

Further, protecting a single colour as a mark can be a challenge – especially in Serbia, where colour marks can only be protected when they have garnered distinctiveness through use over time.

Classes and fees

All Western Balkan jurisdictions are multi-class and follow the Nice Classification system.

Official fees are paid for the first three classes regionwide. Subsequently, there are additional fees for each additional class, apart from in Albania and Croatia where fees are paid per individual class from the outset.