International Trademark in Serbia – How to Register It

Do you want to protect your brand through an international trademark in Serbia, i.e., a trademark abroad? Here’s how international trademark registration in Serbia works and what role a lawyer plays in the process.

If you already conduct business outside of Serbia or plan to do so, it is crucial to protect your brand beyond the borders of Serbia or any other country where you live or operate. Why is this important? Because trademark protection only applies within the territory of the country where your trademark is registered. As we explained earlier in our blog post on national trademark registration, a national trademark is valid only in the country in which it was registered.

In addition to a national trademark, there is also the international trademark, which can be extended and valid in one or more countries that you specify, up to 131 countries!

So instead of filing separate national trademark applications in each country, the international trademark registration (also known as international brand registration) allows you to apply for protection in multiple countries through a single process, under the system known as the Madrid Agreement. This procedure significantly simplifies the process when you want to secure trademark protection in several countries at once.

What Is an International Trademark?

An international trademark is a sign (e.g., a name, logo, or a combination of both) protected in multiple countries through a single application for international trademark registration. The registration procedure is initiated by submitting a request to the national Intellectual Property Office, and then conducted with the assistance of the World Intellectual Property Organization (WIPO).

Once your international trademark is successfully registered, your brand is protected in all the countries you designated in the application for international trademark registration. However, it is important to know that after filing your international trademark application, each country makes its own decision whether to accept your request for international trademark protection.

In other words, the process starts in your home country (e.g,. Serbia), but the final decision is made by the intellectual property authority of each foreign country you indicated in your international trademark registration application.

Why Is It Helpful to Conduct a Search Before International Trademark Registration?

Before filing a request for international trademark registration, it is advisable to engage an expert for a clearance search (prior check of similar existing trademarks) in each country where you seek protection.

Since every national intellectual property office individually examines whether your sign meets the conditions for protection, it is possible that a similar or identical international trademark already exists in one of those countries, which could pose an obstacle. Conducting such a check can save you time and money, and an intellectual property lawyer can help you complete the process efficiently, even abroad, including international trademark registration in Serbia.

Three Groups of Conditions for International Trademark Registration

I) A National Trademark as a Prerequisite for Filing an International Trademark Application from Serbia

To submit a request for international trademark registration, it is necessary to either already have a national trademark registered or to have applied for national trademark registration in Serbia.

In other words, if you have not yet registered a trademark in Serbia, you must first submit a domestic application for your trademark or do so simultaneously with your application for international trademark registration.

Thus, a national trademark always goes hand in hand with an international trademark.

II) Who Has the Right to File an International Trademark Application in Serbia?

The right to submit an international trademark application in Serbia belongs to:

• Citizens of the Republic of Serbia,
• Natural persons with residence in the territory of the Republic of Serbia,
• Legal entities that have a real and effective industrial or commercial establishment in Serbia.

III) Identity Between Filed Applications for International Trademark Registration

Since the national and international trademark applications go hand in hand, the application for international trademark registration must be identical to the domestic application or already registered trademark. This means the same:

• sign,
• trademark holder (owner),
• the same or narrower list of goods and services.

These are the basic conditions applicable to an international trademark, in addition to general requirements, which include, among others, that your trademark must not be identical or similar to an already registered trademark for the same or similar goods in a given country, nor can your trademark merely describe the type of goods.
You can discuss all general conditions for trademark registration in more detail with an intellectual property lawyer.

The Procedure for International Trademark Registration

After submitting your application for international trademark registration, the Intellectual Property Office in Serbia will examine whether the application is complete (accurate and containing all necessary elements). If everything is in order, you will be notified to pay the official fees, after which your international trademark application will be forwarded to WIPO.

The application then enters the registration process in the countries you designated in your international trademark application.

However, this still does not mean that your trademark is automatically registered in those countries. Each country has a period of 12 to 18 months to examine whether the conditions for international trademark registration are met and to decide whether to accept or refuse the protection in its jurisdiction.

If you do not receive a notice of refusal from a particular country within that period, your international trademark is deemed accepted (registered) in that country.

The Role of a Lawyer in International Trademark Matters

An international trademark lawyer plays a key role in two situations:

• When you are seeking international trademark protection from Serbia, a lawyer assists you in properly drafting your application for both national and international trademark registration.
• When an international trademark application is filed from abroad and Serbia is designated, if the Intellectual Property Office of Serbia issues a provisional refusal or raises objections, it is necessary to engage a lawyer specializing in intellectual property law in Serbia. An authorized lawyer in Serbia can represent a foreign applicant before the Serbian IP Office in this procedure and submit a response to the provisional refusal of international trademark registration. In other words, a lawyer in Serbia can represent you if any issues arise regarding international trademark registration in Serbia.

Wherever your starting point or final destination may be, the benefits of engaging a lawyer are universal.

Duration and Renewal of International Trademarks

An international trademark is valid for 10 years and can be renewed indefinitely. The renewal is not done through the national office, but directly through WIPO, and the trademark holder is responsible for submitting the renewal request within the prescribed deadline.

If the international trademark registration is not renewed on time, there is a grace period of six months after the expiration date during which the renewal can still be completed, but with an additional late fee.

If you filed your application for international trademark registration based on a pending national application (rather than already registered national trademark), then your international trademark will depend, during the first five years, on the outcome of the national application. In other words, the fate of your international trademark is tied to the outcome of the national trademark registration process.

Example: You file a national trademark application in Serbia, and immediately after that, you seek international protection based on that application. If the Serbian Intellectual Property Office rejects your national application, your international trademark will also be either cancelled or restricted by that national decision. This is a direct consequence of the principle that national and international trademarks go hand in hand.

If you were to file your international trademark application based on an already registered national trademark, this dependency would not exist. In that case, each foreign intellectual property office would assess the registrability of your trademark in its own country (for example, whether there are identical or similar trademarks for the same or similar goods or services).

And Finally – Why Choose an International Trademark?

Protecting your brand outside your country, or outside of Serbia, is now possible through an efficient and centralized system for international trademark registration. This process brings numerous advantages but requires careful planning and knowledge of both local and international legal frameworks.

Ultimately, by engaging a lawyer for international trademark registration, you ensure that your application is properly prepared and that you are represented professionally and on time, whether you are protecting your trademark abroad or registering your trademark in Serbia from abroad.