New Marks and Geographical Indications Act

On December 17, 2019 the new Marks and Geographical Indications Act entered into force. The new law will bring about what is expected to be the biggest change in the area since 2011 and as such, even before its entry into force, gave rise to intense discussions among the professional community.

The new act implements into national law the provisions of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks aim to align our legislation with the EU regulations on geographical indications.

In conformity with EU legislation the new law drops the requirement for graphical representation of the sign. By introducing a broader requirement the sign to be capable of being represented in a clear and precise manner the new law permits the registration of sound, colour, motion, multimedia, hologram and alike trademarks.

The new act introduces a one-phase model for the formation and payment of state fees due in relation to the registration of trademarks. Alike the model practiced by the European Union Intellectual Property office, state fees for application and examination will be due upon application, eliminating the fee for registration of the trademark. Accordingly, an increase in the application and examination fees is expected to be approved by the Council of Ministers.

The new act introduces shortened terms in the procedure of registration applicable to both – the applicants and the Patent office which is expected to fasten the registration process. Most of the terms in the proceedings related to opposition, revocation and invalidation of a trade mark are also shortened.

The entry into force of the new act terminate the registrations of geographical indications under the previous TMGIA regarding (i) spirit drinks covered by Regulation (EC) No. 110/2008, (ii) wines covered by Regulation (EU) No. 1308/2013, and (iii) aromatized wine products covered by Regulation (EU) No. 251/2014. The registration procedure for the products listed above, as well as for agricultural products and foodstuffs covered by Regulation (EU) No. 1151/2012 will only be carried out as provided for in the respective regulations.

The new Marks and Geographical Indications Act applies to all procedures regarding applications for registration of trademarks and geographical indications initiated after its entry into force, as well as to all pending proceedings for registration, revocation and invalidation of trademarks and geographical indications, in which no decision has entered into force until 17 December 2019.