The amendments to the Patent and Trademark Laws of Montenegro entered into force on January 18, 2023. The amendments to the Trademark Law aim to bring the country's law into line with the EU Trademark Directive 2015/2436 and the Singapore Treaty on the Law of Trademarks, while the amendments to the Patent Law aim to bring the country's law into line with EU Directive 2019/933.

Amendments to the Trademark Law

The amendment removes the requirement for graphic representation, which means that the mark may be represented in any form to distinguish the goods or services to which the mark applies from those of other businesses, and to enable the competent authority to clearly determine the scope of protection sought by the mark. Sound trademarks can now be represented by audio files, rather than just musical phrases represented by a marking system. Trademarks can now also consist of a person's name and three-dimensional features such as the shape or packaging of goods, which were not directly regulated in the previous law.

The list of absolute grounds for rejection has also been expanded. The new change is that the mark will not be registered if:

- The application does not comply with EU or Montenegro legislation on geographical indications and appellations of origin, traditional expressions of wine and guarantees of traditional characteristics (TSG); or

- The logo of the application consists of the prior name of a plant variety registered in Montenegro or in the European Union, or replicates the name of the plant variety on its essential elements, while referring to the same or closely related plant varieties;

- If the trademark objection is based on an earlier trademark that has a reputation in Montenegro, a later application mark that is identical or similar to the earlier trademark will not be registered, regardless of whether the goods or services covered by the two trademarks are identical, similar or not similar. This was not previously clearly defined in the law.

The amendment also adds two new types of unlicensed use of trademarks:

- Use of the trademark as a trade name or company name or as part of a trade name or company name; and

- Use of trademarks in comparative advertising in a way that violates the provisions on misleading and comparative advertising.

Previously, when the trademark objection procedure was suspended while negotiations were underway to reach an agreement, the parties had to reach an agreement within six months. The parties now have 24 months to reach an agreement.

The provisions relating to licensing, continuation of procedures and correction of errors in applications and registrations are consistent with the provisions of the Singapore Treaty on Trademark Law.

Revocation (on both absolute and relative grounds) and "unused" revocation procedures are now the responsibility of the Montenegro Intellectual Property Office, rather than being enforced in the courts as in the past. The process is expected to become more efficient as IP offices have a broader understanding of IP issues.

Finally, the amendment to the Trademark Law introduces simplified procedures for the destruction of counterfeit goods, which will make intellectual property enforcement by trade inspection agencies faster and more cost-effective.

Amendments to the Patent Law

The amendment to the Patent Act introduces a Supplementary Certificate of Protection (SPC) manufacturing exemption, which will come into effect upon Montenegro's accession to the EU. Once Montenegro joins the EU, companies in the country will be allowed to produce generic or biosimilar versions of SPC-protected medicines during the SPC validity period, subject to the following two conditions:

- intended for export to countries where SPC protection is not available or cannot be implemented; or

- For storage during the last 6 months of the SPC's validity in order to place the product on the EU market after the SPC expires.