How to navigate provisional refusals in the Western Balkans

Provisional refusals can be challenging for rights holders to overcome, but a solid understanding of the local requirements can help them to streamline the process. Besides Kosovo, all jurisdictions in the Western Balkans are members of the Madrid Protocol. When faced with a provisional refusal, it is necessary for the rights holder to reply and find a local agent.

Provisional refusals at the Serbian IPO

The Serbian IPO can protest an international registration application based on relative grounds. Overcoming this can be somewhat difficult as the opponent is not the owner of the original rights, so letters of consent and/or cancellation actions both come into play. 

Often, foreign trademark owners fail to understand that the Serbian IPO will not discuss a comparison or limitations of goods and services but will rather reject whole classes even when only one or two points are identical or similar.

Further, the Serbian IPO rejects the coexistence of identical marks, even when they are owned by the same entity. This is often confusing for clients because there is no real cohesion on the matter. However, the Serbian IPO’s stance is that if two marks are truly identical, no argument can be made and the new application would have to be refused or one of the marks withdrawn. 

It is often suggested that earlier marks should be sacrificed as a new cancellation due to non-use would start with a new registration and there would be no time in which the mark is unprotected, so no other applications could cause an issue. 

Automatic refusals at the Albanian IPO

In Albania, if the provisional refusal states that part of the mark should have a disclaimer – and if the applicant fails to reply to the refusal – the IPO will automatically apply the refusal. 

Although, if the applicant does not reply, the Albanian IPO is often slow to send a grant decision to WIPO, taking up to one year to do so.

Replies and extensions in the Western Balkans

For provisional refusals based on absolute or relative grounds in Serbia, the timeframe for replies and extensions issued by the IPO is six months, plus a three-month extension. For provisional refusals based on an opposition, rights holders have two months to file powers of attorney (POA) and register as representatives in order to receive the opposition. 

For provisional refusals based on absolute grounds in Croatia, rights holders have four months to reply (with no extension). The same timeframe applies when it comes to provisional refusals based on an opposition; rights holders have four months to file the POA and register as representatives in order to receive it. 

In Bosnia and Herzegovina, for provisional refusals based on absolute grounds, rights holders have four months to reply (with no extension). For a provisional refusal based on an opposition, the same timeframe applies, and rights holders must file the POA and register as representatives within this period in order to receive the opposition. The same timeframes apply in Montenegro. 

For provisional refusals based on absolute grounds in Slovenia, the timeframe during which to reply is three months, plus a three-month extension. For provisional refusal based on an opposition, there is a three-month window to file the reply – including submission of the POA – plus a three-month extension. 

For provisional refusals based on absolute grounds in Albania, rights holders have four months to reply (with no extension). For provisional refusals based on an opposition, they have two months to file the POA and register as representatives in order to receive it.

For provisional refusals based on absolute grounds in North Macedonia, rights holders have 30 days to reply, with the option of a 30-day extension. For provisional refusals based on an opposition, they have 60 days to file the reply, including submission of the POA.