Dragan Milic, Attorney at law - Copyright, Media Law, Intellectual property, IT Law, Internet Law, Privacy Law and GDPR

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PROCESS IN FRONT OF THE AUTHORIZED COURT

Trademark Law of Republic of Serbia protects the right of a registered holder of particular trademark in a way that gives him the possibility to submit a complaint before the competent court for any unauthorized use of a protected sign, which is identical to a sigh related to goods or services, for which his trademark is registered.

The holder of a trademark has the right for protection of not only the same but also similar signs, if there is a possibility that similar signs could make confusion in a relevant part of the public.


With the lawsuit, the following could be demanded:

1.   Determination of trademark right violation

2.   Termination of the trademark right violation

3.   Seizure, removal from the market, destruction or alteration, free of charge, of subject by which the right has been violated

4.   Seizure, removal from the market, destruction or alteration, free of charge, of the tools and equipment used to manufacture the articles used in trademark right violation, if it is necessary for the protection of rights;

5.   Compensation for damages resulting from a violation of rights and reasonable costs of the proceedings;

6.   Publication of the judgment at the expense of the defendant;

7.   Information about third parties which participated in the violation of rights.


Compensation of damages caused by a violation of trademark, defendant responds under the general regulations which regulate damage- according to the Law of Contracts and Torts.

The deadline for submitting a claim is 3 years from the moment when the owner of the trademark has found out about violation. The right to judicial protection of the trademark in any case expires (objective lapse) of a period of 5 years, since the violation occurred.


ARBITRATION PROCESS

If the trademark violation consists of the registration of “.RS” domain name, the trademark holder has a choice to enforce his rights through the competent court or filing a lawsuit to Arbitration for Internet domain disputes at Serbian Chamber of Commerce, in order to avoid long-term court proceedings in a competent court.

In this case, owner of the trademark has the right with the lawsuit to demand only the transfer of the internet domain from the one who has registered it to itself, or to demand termination of registration. If the plaintiff wants to get some of the seven rights mentioned above, he would have to apply to the regular court.

The procedure for resolving the dispute begins by filing the lawsuits.

Before filing the lawsuit, the plaintiff may submit a request to the registry for information about the owner of the domain (registrant).


The complaint/lawsuit has to include:

1.     First name, last name or the business name of the plaintiff and the registrant

2.    The company headquarter or residence and e-mail address of the parties

3.    The power of attorney, if the prosecutor submits claim through a proxy

4.     Internet domain name that are the subject of proceedings  

5.     Formal request for transfer of .rs domain or termination of domain registration

6.    The evidence on which the decision is based and should to be considered.

With the lawsuit, the names of three arbitrators from official list should be proposed, from which the presidency of Commission grants the prosecutor first available arbiter from the proposed list. Moreover, with the lawsuit the registration fee payment receipt must be submitted.

The complaint shall be submitted in electronic form and in five printed copies, as well. The admission day is considered to be the day of receipt of duly filed lawsuit in a printed form.

After receiving the complaint, the Commission forwards it to the registrant to explain itself. Debate and dispute will be opened only if the tribunal determines that it would be expedient.

The process ends by the adoption of a final decision or by the arbitration panel’s conclusion that the process is terminated (suspended).

The process can be suspended: when the plaintiff withdraws his claim, in the event of parties' mutual agreement, if during the proceedings the regular court makes final judgment on the matter which is the subject of the dispute, the arbitration panel determines that the continuation of the process is unnecessary or impossible.

Arbitration decision is final and there is no possibility for legal remedy.

Execution of the decision which allows the transfer or termination of registration is conducted by the National Register of Internet Domain of Serbia.

 

Dragan Milić, attorney at law