A lawsuit for trademark challenging (contesting) and a lawsuit for trademark infringement are two different legal remedies, both regulated by the Law on Trademarks. While an infringement lawsuit protects the interests of the trademark owner and other authorized persons, a lawsuit challenging a trademark serves a completely different purpose.
Who can file a trademark challenging lawsuit and why?
A lawsuit for trademark challenging exists to protect persons who have not registered a trademark but have a legitimate legal interest in using the same sign. The Law allows these persons to contest another party’s registered trademark if that party filed the application contrary to the principle of conscientiousness and honesty (bad faith application). Furthermore, if the application violates a legal or contractual obligation, the injured party can request the court to declare them as the actual applicant or trademark owner.
Therefore, we distinguish three grounds for filing a trademark challenging lawsuit in Serbia:
- filing a trademark application contrary to the principle of conscientiousness and honesty (bad faith),
- filing a trademark application that violates a legal obligation of the applicant, and
- filing a trademark application that violates a contractual obligation of the applicant.
The Law does not prescribe a deadline for filing a lawsuit on these grounds. This means the plaintiff can contest the trademark at any point during the application stage or after the registration is complete.
To align with the Paris Convention for the Protection of Industrial Property, the Law provides that any natural or legal person using a sign in trade for identical or similar goods or services can file a lawsuit to be declared the rightful applicant or owner. They must prove that their sign was well-known within the meaning of Article 6bis of the Paris Convention before the defendant filed their application. However, this specific lawsuit cannot be filed if more than five years have passed since the trademark registration date. Additionally, if the defendant proves they used the identical or similar sign in trade just as long as or longer than the plaintiff, the court will dismiss the claim.
When can a trademark challenging lawsuit be filed?
The plaintiff can file this lawsuit at any time—either during the trademark application process or after registration. As mentioned, for the first group of grounds (especially bad faith applications), the Law prescribes no deadline. In the second case involving the Paris Convention, a strict five-year deadline applies from the date of registration.
What does the plaintiff seek in the lawsuit?
The goal of the lawsuit is to obtain a final court judgment that registers the plaintiff as the true applicant or trademark owner in the Trademark Register kept by the Intellectual Property Office of the Republic of Serbia. Once registered, the plaintiff gains all exclusive rights, most notably the right to prohibit others from using an identical or similar sign for identical or similar goods or services in the domestic market.
If the defendant had previously granted a license or usage rights to a third party, all such third-party rights terminate on the day the new rightful owner is entered into the Register. The third party may then negotiate a new contract with the new trademark owner or seek damages from their previous business partner.
Finally, a revision (extraordinary legal remedy) before the Supreme Court is always permitted against final second-instance judgments in these matters, regardless of the monetary value of the dispute.
Author: Attorney Milica D. Čučković, member of the Belgrade Bar Association