Oppositions in the Western Balkans: what rights holders need to know

All Western Balkans jurisdictions now allow for opposition proceedings. In 2020, Serbia introduced an oppositions system but retained the right to examine applications on relative grounds for refusal before publication, after which oppositions can then be filed.

New trademark applications are examined on absolute grounds by local IP offices (IPOs), and are then published and opened for third-party oppositions based on relative grounds.

Filing periods

In Montenegro and North Macedonia, the term to file an opposition proceeding is three months – or 90 days – from publication.

In Albania, Bosnia and Herzegovina, Croatia, Kosovo, Montenegro and Serbia, so long as the opposition itself is filed according to the law, IPOs will allow the proceedings if no reply is provided within the 60-day to three-month non-extendible timeframe outlined in the local law. The registration can be partly or wholly rejected under the legislation, depending on the scope of the opposition.

Grounds for refusal

In Bosnia, if a mark is identical to an earlier trademark application or registration for the same goods or services, this is grounds for absolute refusal.

Since the Serbian IPO itself can contest an application based on relative grounds, overcoming this can be challenging. As the opponent in such a scenario is not the owner of the older right, letters of consent and cancellation actions can come into play. The office will present the opposition request to the owner of the newer right, which will then be able to put forward its argument in writing for the office to make a decision.

Hearings are possible but are seldom held.

Evidence of use

For oppositions in Bosnia and Herzegovina, Croatia, Kosovo, Montenegro, Serbia and Slovenia, most local IP laws explicitly state that the owner of the newer trademark has the right to request evidence of use from the original rights holder. This requirement can greatly impact the outcome of the opposition; without proof of use, the opposition will be thrown out.

In Bosnia, if an opposition is filed unsuccessfully, the basis for its failure cannot constitute the basis for annulment later on, but new evidence can be presented. 

Further, in Serbia, the reply and subsequent office actions will be kept between the application owner and the IPO itself – the owner of the original right will not be informed and may often be unaware of the situation.

Appeals

In Albania there is a two-tier commission process – first before the Opposition Division Commission and then before the Board of Appeal. Both bodies are part of the Albanian IPO.

In Croatia, Montenegro, North Macedonia, Serbia and Slovenia it is possible to appeal the IPO’s decision before an administrative court. In Bosnia and Herzegovina and Kosovo, the appeal can be brought before a commission.