Striking the balance between consumer protection and IP rights

Serbia’s trademark legislation was amended in February 2020 to create a path for opposition, combining the previous approach of ex officio examination for all grounds for refusal with the opportunity for oppositions. However, as the dust settles, it is not yet clear what real benefit this is having for trademark owners or consumers.

Letters of consent can be used in only a few jurisdictions where new applications can be opposed. By default, filing an opposition shows that the owner of the existing trademark does not believe that the two can co-exist and that their rights are being infringed upon by the owner of the new application.

The 2020 amendment means that all applications are still being examined by the Serbian IP Office ex officio for absolute and relative grounds for refusal, and only then published for opposition proceedings.

When the office cites relative grounds as an obstacle to registration by way of an official action, it opens the door to other potential solutions (eg, a motion for cancellation due to non-use or the submission of a letter of consent). The process of obtaining such a letter can be undertaken by the trademark applicant, or by a local lawyer, as they are best placed to advise on the content, form and translation requirements (eg, letters of consent should always be provided on company letterhead and supplied with the company seal/stamp).

If strictly following the letter of the law, letters of consent should be 100% effective. However, in reality, the Serbian IP Office lends much more weight to the principle of consumer protection by preventing highly similar marks from co-existing on the market in order to avoid potential confusion, even if there are no objections from their owners. The same approach is taken with identical marks, that is identical marks cannot co-exist, even if the owner is the same entity or part of the same corporate structure – although this approach is underpinned by a slightly different rationale.

This is a complex subject. Consumer protection is a high priority and should always be considered, but should it always be prioritised? Especially taking into consideration that the law on trademarks, itself does not require such a high threshold as that taken by the office.

Minimising confusion in the market is in the rights holders’ best interest and the most effective way of ensuring that their product or service reaches the intended user. This is at the core of their business, thus it is reasonable to assume that trademark owners will put all due care and attention into avoiding consumer confusion in the marketplace.

For the time being, it is left up to the office to strike the balance of amicable trademark co-existence with potential for consumer confusion in the marketplace.