Montenegro

New Trademark Law entered into force on 16 December 2010. According to the provisions of the new Trademark Law, national Trademarks registered before the IPO of Serbia prior to 28 May 2008 (date of opening of the Montenegrin IPO) have to be validated before the IPO of Montenegro. Namely, it will be necessary to provide proof of registration of Serbian National Trademarks and to file a claim for entry into the Trademark register of Montenegro. This requirement consists in acquiring a validity certificate from the Serbian Trademark Office and filing this validity certificate with the Montenegro Trademark Office along with the claim for entry into the Trademark Register of Montenegro. Once Serbian Trademark Registration was matriculated into the Trademark Register of Montenegro, it will be published in the Intellectual Property Gazette of Montenegro and the IPO will issue the respective Decision on entrance into the Trademark Register. Kindly note that all the rights of the Serbian national trademarks which comply with the above requirement will preserve the same priority and renewal date as in Serbia. The deadline for complying with the above mentioned procedure is 1 year from the date of entering into force of the new Law – 16 December 2011. Failure to do so will result in loss of protection of the referenced Serbian national trademark in Montenegro. The above requirement is not deemed necessary for any Montenegro mark based on a Serbian national trademark for which an action has already been taken directly before the Montenegro IPO prior to December 16, 2010 (such as renewal, assignment, change of name, etc.).

New Law on Legal Protection of Industrial Design entered into force on 8 January 2011. According to the provisions of the new Law on Legal Protection of Industrial Design, all Designs that were granted before the IPO of Serbia prior to 28 May 2008 have to be validated before the IPO of Montenegro within 1 year as from the date of entering into force of the new Law (prior to 8 January 2012) – namely, claims for entry into the Design Register of Montenegro have to be filed before the IPO of Montenegro. The above requirement is not deemed necessary for any Montenegro design based on a Serbian national Design Registration for which an action has already been taken directly before the Montenegro IPO prior to 8 January 2011(such as annuity payments, assignment, change of name/address, claims for Montenegrin Validity Certificates).

Trademarks

• Filing the Application – Requirements
• Registration Procedure
• Opposition
• Duration
• Recording changes in the Register

Patents

• Filing a Conventional Application – Requirements
• Filing a National Phase of PCT Application - Requirements
• Time limits for filing a National phase of PCT Application
• Registration Procedure
• Extension of the European Patent – requirements
• Time limits for filing the Application for the Extension of the European Patent
• Duration
• Recording changes in the Register

Industrial Designs

• Filing the Application – Requirements
• Registration Procedure
• Duration
• Recording changes in the Register

• Conventions:
  • - Paris Convention
  • - Madrid Agreement
  • - Madrid Protocol
  • - The Bern Convention for the Protection of Literary and Artistic Works
  • - Hague Agreement
  • - Nice Agreement
  • - Locarno Agreement
  • - Lisbon Agreement
  • - Budapest Treaty
  • - Patent Cooperation Treaty
• Intellectual Property Law of 17 February 2009
• Trademark Law entered into force on 16 December 2010
• Patent Law entered into force on 7 November 2008
• Law on Legal Protection of Industrial Design entered into force on 8 January 2011
• Copyright and related Rights Law entered into force on 1 January 2005
• Geographical Indications Law entered into force on 1 September 2008
• Law on protection of topographics of Integrated Circuits entered into force on 1 January 2005

Trademarks

• Filing the Application – Requirements: (top)
  • Full name and address of the Applicant
  • Representation (outlook) of the Mark
  • List of goods and services according to Nice Classification 9th addition (Classes 1-45)
  • Priority date, country and number and the original Priority Document which can be submitted subsequently within three months as from the Application date along with certified translation into local language. This term cannot be extended
  • Power of Attorney simply signed in the name of the Applicant. There is no need for legalization or notarization. Power of Attorney can be submitted subsequently within 30 days as from the date of receipt of the Official Invitation from the Office. This term can be extended several times up to six months
• Registration Procedure: (top)
  • The Application is filed and examined with the Intellectual Property Office of Montenegro
  • The IP Office examines absolute grounds for refusal
  • The registration procedure takes approximately 18 months as from the application date
• Opposition: (top)
  • Opposition can be filed within 90 days as from publication date of the application
• Duration: (top)
  • Upon payment of ten years protection fees, the Trademark is valid for 10 years, counting from the application date
  • Upon payment of renewal fees the Trademark will be extended for a further 10 years (this action can be repeated unlimited number of times)
  • The renewal fees can be paid during the last six months of previous ten years protection period or up to six months after the expiration date with a fine of 100% of the renewal fees
• Recording changes in the Register: (top) 1. Assignment of rights Requirements:
  • Power of Attorney, simply signed in the name of Assignor
  • Power of Attorney, simply signed in the name of Assignee
  • Assignment Document signed by the Assignor and the Assignee. The original of Assignment Deed must be submitted or a copy of document which must be legalized by Apostille or notarized by Notary Public
  2. Change of name Requirements:
  • Power of Attorney indicating the new name, simply signed by a representative of the Company
  3. Change of address Requirements:
  • Power of Attorney indicating the new address, simply signed by a representative of the Company

Patents

• Filing a Conventional Application – Requirements (top)
  • Name and address of the Applicant
  • The name and address of the inventor(s) or a statement that inventor does not wish to have his name mentioned in the application
  • Priority date and number
  • Specification of Patent
  • Patent Claims
  • Drawings (if any)
  • Abstract – summary of the invention
  • The document showing the assignment of rights from the Inventors in favor of the Applicant, simply signed by the Inventors – can be submitted subsequently, within 30 days as from the receipt of the official invitation. This term can be extended several times up to six months
  • Power of Attorney simply signed by the Applicant – can be submitted subsequently, within 3 months as from the receipt of the official invitation. This term can be extended several times up to 6 months
  • Priority document – can be submitted subsequently, within 3 months as from the application date along with certified translation into the local language. This term cannot be extended
  • Translation of description, claims and abstract into local language, can be filed subsequently
• Filing a National Phase of PCT Application – Requirements (top)
  • Name and address of the Applicant
  • The name and address of the inventor(s) or a statement that inventor does not wish to have his name mentioned in the application
  • Specification of Patent
  • Patent Claims
  • Drawings (if any)
  • Abstract – summary of the invention
  • Priority date, country and number
  • International Search report
  • International Preliminary Examination Report for the applications filed under the Chapter II of Patent Corporation Treaty
  • PCT Request
  • PCT Publication page
  • The document showing the assignment of rights from the Inventors in favor of the Applicant, simply signed by the Inventors – can be submitted subsequently, within 30 days as from the receipt of the official invitation. This term cannot be extended
  • Power of Attorney simply signed by the Applicant – can be submitted subsequently, within 3 months as from the receipt of the official invitation. This term can be extended several times up to 6 months
  • Translation of description, claims and abstract into local language, can be filed subsequently
• Time limits for filing a National phase of PCT Application (top)
  • Since the Montenegro is 30th month country, the application is to be filed with the office within 30 months as from the Priority Application date
• Registration Procedure (top)
  • Application is to be published as soon as possible after the expiration of 18 months as from the application date or as from the priority date
  • The IPO of Montenegro provides only formal examination of patents (no substantive examination is prescribed by the Patent Law). In case all formal requirements are met, the patent will be granted. The date of publishment of patent application is to be considered as the date of grant of the European Patent
• Extension of the European Patent - requirements (top)
  • As from 1 March 2010 it is possible to designate Montenegro
  • B1 Patent Specification
  • Power of Attorney, simply signed in the name of the Applicant. There is no need for legalization or notarization. POA could be submitted subsequently, within 30 days
  • Translation of patent description and patent claims into local language
  • For those European Patents that were filed prior to 1 March 2010 the special rule is prescribed - in case Serbia was designated and the fees for extension were paid for Serbia, it is possible to file a claim before the IPO of Montenegro for issuance of the Validity Certificate – requirements are: 1) the copy of request for the entry of the extended european patent into the Register of patents filed before the IPO of Serbia; 2) B1 Patent Specification; 3) Power of Attorney, simply signed in the name of the Applicant; 4) Translation of patent description and claims into local language
• Time limits for filing the Application for the extension of the European Patent (top)
  • The Application for the Extension of European Patent is to be filed within 3 months as from the date of publication of grant of the European patent
• Duration (top)
  • 20 years as from the application date for Conventional patents
  • 20 years as from the International filing date for the National phase of PCT patents
  • 20 years as from the European filing date for the Applications for extension of EP
  • The protection fees are to be paid annually, prior to the expiration date of the year for which the protection fees have been paid or six months after the expiration of the protection period at the latest with 50% fine
• Recording changes in the Register: 1. Assignment of rights Requirements: (top)
  • Power of Attorney simply signed by the Assignor
  • Power of Attorney simply signed by the Assignee
  • Assignment Document signed by the Assignor and the Assignee. Document nust be legalized by the Apostille or notarized by Notary Public
  2. Change of name Requirements:
  • Power of Attorney indication the new name, simply signed by a representative of the Company
  • Extract from the Company Register showing the change of name or Statement of the Secretary of State showing the change of name
  3. Change of address Requirements:
  • Power of Attorney indicating the new address, simply signed by a representative of the Company

Industrial Design

• Filing the Application – Requirements (top)
  • Name and address of the Applicant
  • Name and address of the author or notice that the author chooses not to be mentioned in the application
  • Information regarding the number of external shapes the protection is requested for
  • Full and short title of the industrial design
  • A two-dimensional presentation of the shape being the subject of protection (photograph or a graphic presentation of the product the protection is requested for)
  • description
  • Legal Base (Declaration) for filing the application, in case the application was not filed in the name of the author. Legal base has to be simply signed by a representative of the Applicant
  • Priority date, country and number and the original Priority Document which can be submitted subsequently within three months as from the Application date along with certified translation into local language. This term cannot be extended.
  • Power of Attorney, simply signed in the name of the Applicant. The POA can be submitted subsequently within one month as from the receipt of the Official Invitation. This term can be extended several times up to 6 months
• Registration Procedure (top)
  • The Industrial Design Application is examined by the Intellectual Property Office (the examination procedure lasts about 24 months). If the Application meets prescribed requirements, the Office is issuing the Decision on grant
  • The fees for the first five years of protection are payable once for five years period. From 6th to 25th year the fees are payable annually
• Duration (top)
  • 25 years as from the Application date
• Recording changes in the Register: (top) 1. Assignment of rights Requirements:
  • Power of Attorney simply signed by the Assignor
  • Power of Attorney simply signed by the Assignee
  • Assignment document signed by the Assignor and the Assignee. Document must be legalized by Apostille or notarized by Notary Public
  2. Change of name Requirements:
  • Power of Attorney indication the new name, simply signed by a representative of the Company
  3. Change of address Requirements:
  • Power of Attorney indicating the new address, simply signed by a representative of the Company