Trademark
TRADEMARK
A trademark is the right that protects a mark used in the course of trade to distinguish goods and/or services of one natural or legal person from identical or similar goods and/or services of another natural or legal person.
A mark may consist of words, slogans, letters, numbers, images, drawings, combinations of colors, three-dimensional shapes, combinations of such marks, as well as musical phrases represented by musical notes, etc.
A trademark may be an individual trademark and a collective trademark. An individual trade mark is a legally protected sign used in trade by the holder, who may be a natural or legal person. A collective mark is a mark of associations and legal persons governed by public law which is registered with the general act on collective marks.
Seals, stamps and hallmarks (official marks for marking precious metals, measurements and the like) shall not be considered trademarks.
The function of a trade mark is to enable consumers to distinguish the goods or services of one natural or legal person from goods and services of another natural or legal person. The trademark holder shall be exclusively entitled to use the sign protected by the trademark for the purpose of marking goods or services and shall be entitled to prevent other persons from using the same or a similar sign without authorisation for the purpose of identifying identical or similar goods or services.
A trademark right shall last for ten years from the date of filing application. Additionally, the trademark can be renewed an unlimited number of times for a period of ten years, provided that prior to the expiry of the ten-year period, the trademark holder submits to the competent authority the request for the renewal of a trademark accompanied by proof of payment of the required administrative fees and duties
TRADEMARK REGISTRATION PROCEDURE
A trademark is protected in accordance with the Trademark Law ("Official Gazette of Montenegro", No. 72/10, 44/12, 18/14, 40/16, 2/17, 3/23, and 84/24), while the Rulebook on the Procedure for Recognition, Changes, Renewal of Validity, and International Registration of Trademarks ("Official Gazette of Montenegro", No. 50/11 and 54/23) regulates the detailed content and manner of maintaining the Trademark Register, the detailed content of the application for trademark registration, the content of the request for issuing a certificate of priority right and the content of the certificate of priority right, the content of the data from the application that are published in the Official Gazette, the detailed content of the data for trademark registration that are published in the Official Gazette, the detailed content of the request for separation of the trademark and the documentation submitted with the request, the content of the request for entry of changes in the Trademark Register and the documentation attached to the request, the detailed content of the request for entry of trademark transfer and the documentation attached to the request, the content of the request for renewal of trademark validity and the documentation attached to the request, and the content of the request for international registration of trademarks as well as the evidence submitted with the request.
The procedure for trademark registration shall be initiated by filing an application to the Ministry of Economic Development.
The application shall contain following elements:
1. a request for the registration of a trademark;
2. Information identifying the applicant;
3. Representation of the mark for which trademark protection is sought;
4. List of goods and/or services for which the registration is sought, classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
5. Proof of payment of administrative fees;
6. Power of attorney, if the application has been filed through a representative. (which is mandatory when a foreign legal or natural person submits the trademark application).
Goods and services for which the mark is applied are classified according to the International Classification of Goods and Services (Nice Classification). The applicant is required to clearly and precisely identify the goods and services for which trademark protection is sought so that the scope of protection requested can be determined solely based on the application.
If the list of goods and services is not in order, the examiner will invite the applicant to rectify the identified deficiencies within a reasonable period in order to proceed with the application.
The 12th edition of the Nice Classification in English or French is available at the following link: Nice Classification (wipo.int) A translation of the terms into Montenegrin is available at the following link: Pomoc pri klasifikaciji - TMclass (tmdn.org).
The examination procedure of the submitted application includes checking the fulfillment of formal requirements and the existence of absolute grounds for refusal of registration. A proper application for which no reason for refusal of registration has been established is published in the official intellectual property gazette.
The trademark holder shall acquire rights resulting from trademark on the day the trademark is registered. The date of the official decision on the trademark registration shall also be considered as the date when the trademark has been entered into the Register. The Ministry of Economic Development publishes the data on the trademark that are entered into the Register in the official intellectual property gazette.
The official gazette is issued by the competent authority.
The administrative fee for submitting an trademark application is € 60.00 if the application is for a verbal mark, or € 68.00 if the application has a figurative element or a verbal mark with a graphic design. If the list of goods and services includes more than three classes, an additional €8.00 is charged for each subsequent class. The account for paying administrative fees is: 832-3161910-97.
INTERNATIONAL REGISTRATION OF TRADEMARK
A registered trademark is valid in the territory of Montenegro. The same trademark can be protected in multiple countries, provided it is internationally registered for each of them.
The basis for filing an application for international trademark registration is a national trademark application or a nationally registered trademark. The national trademark application can be submitted before or simultaneously with the application for international trademark registration. The information provided in the application for international trademark registration must be identical to the information in the national application or registration that serves as the basis for international registration (same applicant, same mark, same or narrower list of goods and services).
The procedure for international trademark registration shall be initiated by filing an application that includes:
1. Application for international recognition of the trademark (Form MŽ-1) submitted in two identical copies;
2. A list of goods or services according to the International Classification of Goods and Services, in English;
3. Power of attorney, if the application has been filed through a representative;
4. Proof of payment of the administrative fee.
The administrative fee for filing an international trademark application is €20.00, and the administrative fee for forwarding the application to the International Bureau of the World Intellectual Property Organization is €40.00. The account for paying administrative fees is: 832-3161910-97.
Fees payable under the Madrid Agreement and the Madrid Protocol are paid directly to the International Bureau.
If it is determined that the application for international recognition of the trademark is in order and meets all prescribed legal requirements, the international fee is calculated using the web address:
http://www.wipo.int/madrid/en/fees/calculator.jsp, and the applicant is invited to pay the calculated fee to the address: World Intellectual Property Organization (WIPO), 34, chemin des Colombettes, 1211 Geneva, Switzerland, by payment to its bank account: WIPO bank account IBAN No. CH51 0483 5048 7080 8100 0 Code SWIFT: CRESCHZZ80A Credit Suisse, CH-1211 Geneva 70., and to provide proof of payment.
Countries in which protection can be obtained can be found at the link: http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf
A trademark registered under the Madrid Agreement and the Madrid Protocol enjoys the same protection as if it were registered based on an application directly filed in the designated country.
The trademark is registered for a period of ten years and its validity may be extended an unlimited number of times. The international trademark is tied to the national registration for a period of five years, and it ceases to be valid if the national registration ceases to be valid within that period.