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Page1 Law on Amendments to the Law on Legal Protection  
 of Industrial Design  
 
("Official Gazette of Montenegro", No. 42/16)  
 
Article 1 
 
In the Law on Legal Protection of Industrial design ( “Official Gazette of Montenegro ”, 
No. 80/10 and 27/13), in Article 2 , after paragraph 4, a new paragraph shall be added to read  as 
follows :  
 
„Community designs registered with the Office for Harmonization in the Internal Market 
shall also have effect  in Montenegro”.  
 
Article 2  
 
In Article 3 paragraph 3, after words : „ a fore ign legal and natural person” the following 
words shall be added: “who do not have their legal seat i.e. approved permanent residence or 
temporary stay  in the territory of Montenegro”.  
 
Article 3 
 
In Article 6 paragraph 2, the words:  “the author of the d esign (hereinafter referred to 
as: the designer)” shall be replaced by the word “designer”.               
 
Article 4 
 
In Article 7 paragraph 4, the word “author” in different grammatical cases shall be 
replaced by the word “designer” in a corresponding gram matical case.  
 
Article 5  
 
In Article 11 after item 7, a new item shall be added to read  as follows :  
 
„8) if it is in conflict with an earlier design disclosed to the public following the filing date 
of the application or if the priority right has been cl aimed , following the priority date , and  
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Page2 which has been protected from a date prior to said date by the registered Community design or  
an application for registration of a  Community design.    
 
Article 6 
 
In Article 17 paragraph 1, the words “if claimed in the territory of Montenegro, in good 
faith” shall be replaced by the words “if claimed, in the territory of Montenegro in good faith”, 
and after the word “protection” the words : “of the registered design” shall be added.  
 
Article 7 
 
In Article 18 , after paragraph 1, a new paragraph shall be added to read  as follows:   
 
“If the right holder of the design puts in the market in the territory of the European 
Union  and/or of the countries signatories to the Agreement on the European Economic Area a 
product compr ising a protected design and/or a product designed in accordance with the 
protected design, or if the right holder of the design authorizes another person to put such 
product in the market, the right holder of the design shall not be entitled to prevent th ird 
parties from further disposing of that product which has been purchased in the course of legal 
trade ”.  
 
Paragraph s 2 and 3 shall be deleted.   
 
Article 8 
 
 
Article 19 shall be amended to read as follows:  
 
„The provisions of this Law shall be without pr ejudice to any provisions of regulations 
relating to unregistered design rights, trademarks or other distinctive signs, patents and utility 
models, typefaces and provisions governing civil liability or unfair competition. „  
 
Article 9 
 
In Article 21 , after  paragraph 2 a new paragraph shall be added to read  as follows:  
 
“The license agreement referred to in paragraph 1 of this Article shall produce legal 
effect towards third persons upon entry into the Register”.   
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Page3  
Previous paragraphs 3, 4 and 5 shall becom e paragraphs 4, 5 and 6. 
 
Article 10 
 
In Article 22 paragraph 3 the words: “ shall have legal effect towards other parties” shall 
be replaced by the following words:”shall produce legal effect in relation to third parties”.  
 
Article  11 
 
In Article 23 parag raph 5 shall be amended to read  as follows:  
 
“Pledge shall produce legal effect in relation to third parties upon the entry into the 
Register”.  
Article 12 
 
In Article 28 paragraph  1, the words “or similar” shall be deleted.                                                                                                                                      
                                                                                                                                                                                                                                                                                                             
Article 13 
 
In Article 32, after paragraph 5 , a new paragraph shall be added to read  as follows:  
„If the applicant fails to submit a proof for acknowledgement of the priority right 
referred to in Articles 29 and 30 of the present Law, the competent authority may reject the 
request for acknowledgment of the priority right”.  
Article 14 
In Article 34, after parag raph 4, two new paragraphs shall be added to read  as follows:  
„The competent authority may issue a design certificate on request of the right holder, 
provided that the prescribed administrative fee is duly paid.  
The content of the design certificate refe rred to in paragraph 5 of this Article shall be 
defined by regulation  of the Ministry”.   
Article 15 
 
In Article 37 paragraph 1, the full stop at the end of the text shall be replaced by a 
comma, and the following words shall be added: “ provided that due t o such a failure  the loss of 
right has come into effect”.   
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Page4  
In paragraph 3, the words:”provided that the loss of right has not come into effect” shall 
be deleted.    
Article 16 
 
In Article 38 paragraph 2, the full stop at the end of the text shall be repla ced by a 
comma and the following words shall be added: “ and such action must be performed within a 
specified time period ”.  
 
Paragraph 6 shall be amended to read  as follows:  
 
„The request for restitutio in integrum  may not be submitted following the expir y of a 
time period referred to in paragraphs 2 and 3 of this Article”.  
 
After paragraph 6 a  new paragraph shall be added to read  as follows:   
„Provisions of paragraph s 1 to 5 of this Article shall not apply to the time period s 
specified in Articles 29, 30 and 37 of the present Law”.  
Article 17 
In Article 40 paragraph 1, item 4 shall be deleted.  
Article 18 
In Article 41 paragraph 5 shall be amended to read  as follows:  
“Exceptionally of Article 32a paragraph 3 of the present Law, for the holder of the 
international industrial design registration, the deadline for  commenting on the reasons  for 
rejection of registration and submi tting  proof of new facts which might affect the decision of 
the competent authority shall be four months following the date of the written noti fication by 
the competent authority on rejection of registration”.  
Article 19 
 
After Article 41, a new chapter and seven new articles shall be added to read  as follows:  
 
„VIIa  COMMUNITY DESIGN  
  
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Page5 Definitions  
Article 41a 
  
Within the meaning of A rticle 2 paragraph 5, Article 11 item 8 and Article 41b to 41 g of 
the present Law:  
 
1) the Community design is a registered and nonregistered design in the manner as 
provided for in Article 1 of the Council Regulation (EC) 6/2002 of 12 December 200 1 on 
Commu nity designs, and its amendments (hereinafter referred to as: the Regulation on 
Community designs);  
2) the Community design application is the application for registration of a Community 
design filed in accordance with the provisions of the Regu lation on Com munity designs ; 
3) the national design is design registered in the proceedings before the competent 
authority  in accordance with the provisions of the present Law:  
4) the national design application is the application for design registration filed with the 
comp etent authority in accordance with the provisions of the present Law.  
 
Extension of effect of Community design s 
Article 41b 
  
Community design applications filed before accession of Montenegro to the European 
Union and Community designs acquired before ac cession of Montenegro to the European 
Union, shall have effect in the territory of Montenegro.  
 
Community design and Community design application as an earlier right  
Article 41c 
 
Within the meaning of Articles 5 to 7 and Article 11 item 4 of the present Law, the 
Community design application and the Community design are considered as an earlier design  in 
relation to the national design applications  filed and national designs registered on the basis of 
such applications after the date of accession of Montene gro to the European Union.  
 
Filing of applications for Community design  
Article 41d 
 
An application for a Community design may be filed directly at the Office for 
Harmonization in the Internal Market or at the competent authority.  
  
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Page6 Where the application  for a Community design is filed at the competent authority 
pursuant to Article 35 paragraph 2 of the Regulation on Community designs, the competent 
authority shall enter the date of filing of the application and forward the application without 
further exa mination to the Office for Harmonization in the Internal Market within two weeks of 
receipt , against the payment of  the prescribed administrative fee and costs of forwarding.    
 
Prohibition of use of Community design s  
Article 41e 
 
If the use of a Communi ty design referred to in Article 41b of the present Law is in 
contravention of the use of a national design acquired before the date of accession of 
Montenegro to the European Union or acquired on the basis of a national design application 
filed before the  date of accession of Montenegro to the European Union, the holder of such 
national design may request the prohibition of use of the Community design   in Montenegro  by 
filing a lawsuit , whereby he/she must prove that the use of the Community design is in 
contravention of his/her national design.  
 
Protection of Community designs against infringement   
Article 41f 
 
Provisions governing the legal protection in case of infringement of a national design 
shall also apply to the legal protec tion in case of infrin gement of a Community design.  
 
Community Design courts  
Article 41g 
 
The Commercial Court is the court which shall be competent for ruling in the first 
instance on disputes concerning Community designs referred to in Article 80 paragraph 1 of the 
Regulatio n on Community designs, in accordance with the law governing the establishment, 
organization and jurisdiction of courts.  
 
The Court of Appeals  is the court which shall be competent for ruling  in the second 
instance on disputes concerning Community designs  referred to in Article 80 paragraph 1 of the 
Regulation on Community designs, in accordance with the law governing the establishment, 
organization and jurisdiction of courts”.  
 
Article 20 
  
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Page7 Article 43 shall be amended to read  as follows:  
 
„Declaration of  invalidity of industrial design  
Article  43 
 
In case when a design is registered contrary to the provisions of Article 11 of the present 
Law, the competent court may declare the registered design invalid, either in whole or in a part .   
 
Design may be declared partially invalid if it does not meet the requirements set out in 
Articles 4 to 7 of the present Law, in connection with Article 11 item 2 of this Law, as well as 
due to existence of reasons set out in Article 11 item 1 and items 5 , 6 and 7 of the pre sent Law, 
provided that it meets requirements for registration in the part which remain s valid and 
provided that the identity of design is retained .    
 
The lawsuit for declaring the registered design invalid may be filed for the entire 
duration of the rig ht to design, after expiry of the right and after abandonment of the right.  
 
In case of existence of reasons referred to in:  
 
1)Article 11 items 1 and 2 of the present Law, the lawsuit may be filed by any interested 
person, state prosecutor and competent authority ex officio ;  
 
2)Article 11 item 3 of the present  Law, the lawsuit may be filed by a person who is 
entitled to acquire an industrial design in accordance with this Law;  
 
3)Article  11 items 4, 5 and  6 of the present Law, the lawsuit may be filed b y a person 
whose right is infringed, applicant, state prosecutor and competent authority ex officio ; 
 
4)Article 11 item 7 of the present Law, the lawsuit may be filed by a person or authority 
concerned with t he improper use, state prosecutor and competent authority ex officio .  
 
The court shall be obliged to submit to the competent authority and parties to the 
proceedings the final verdict declaring the design invalid either in whole or in a part, without 
any delay.  
 
The competent authority shall enter the  declaration of invalidity of a design into the 
Register and publish it in the Official Gazette”.  
  
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Page8 Article 21 
In Article 44 after paragraph 1, t wo new paragraphs shall be added to read  as follows:  
“The lawsuit referred to in paragraph 1 of this Article  shall be filed within three years of 
the date of publication of the industrial design registration in the Official Gazette.  
If the plaintiff proves that the defendant acted intentionally, the lawsuit ref erred to in 
paragraph 1 of this Article may be filed for the entire duration of the industrial design 
protection. ”  
Previous paragraph 2 shall become paragraph 4.  
 
Article 22 
 
Title of Article 45 shall be amended to read  as follows:   
 
„Request for citation of designer ” 
 
Paragraph 1 shall be amended to read  as follows:  
 
“By filing a lawsuit with the court, t he person who considers himself/herself as being the 
designer or his/her legal successor, may seek from the court to determine that he/she is the 
designer of the design registered to the defendant’s name  contrary to  the provisions of Article 
13 of the present Law, and that he/she be cited as the designe r in all documents and in the 
Register ”.  
 
Article 23 
 
In Article 46 after paragraph 3, a new paragraph shall be added to read  as follows:  
 
“Fines referre d to in paragraphs 2 and 3 of this Article may be pronounced to a legal 
person in the amount of EUR 2,000 to EUR 10,000, an entrepreneur in the amount of EUR 500 
to EUR 3,000, and to a natural person and responsible person of a legal entity in the amount o f 
EUR 250 to EUR 1,500”.  
 
Previous paragraphs 4  to 7 shall become paragraphs 5  to 8”.  
 
 
  
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Page9 Article 24 
 
In Article 50a, the words  „Articles 46 to 50c” shall be replaced by the following words: 
“Articles 46 and 46a”.  
 
Article 25 
 
After Article 50c, a new art icle shall be added to read  as follows:  
 
„Filing a l awsuit for declaration of invalidity of industrial design  
Article 50d
  
 
Regarding the proceedings in itiated  for the purpose of protection of an industrial  design 
in accordance with Articles 46  to 50c o f the present Law, the defendant  may file a lawsuit for 
declaration of invalidity of the design referred to in Article 43 of the present Law.  
 
In case of filing a lawsuit  for declaration of invalidity of an industrial design , the court 
shall, taking into account all circumstances of the case and in accordance with general 
regulations  governing litigation and enforcement proceedings, determine whether to suspend 
the proceedings instituted for the purpose of protection of a design against infringement and 
on which conditions, or to merge  the proceedings for joint deliberation ”.  
 
Article 26 
 
In Article 51 item 1, the words: “with Montenegrin citizenship residing in Montenegro” 
and the comma shall be deleted.  
 
In item 3, the words: with its legal seat in Monte negro” shall be deleted.  
 
Article 27 
 
After Article 53, a new chapter and four new articles shall be added to read  as follows:  
 
„Xa SUPERVISION  
 
Supervision over enforcement of the Law  
Article 53a
  
  
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Page10 Supervision over enforcement of the present Law and re gulations issued on the basis of 
the present Law shall be conducted by the Ministry.  
 
Inspect orial supervision over the enforcement of the present Law shall be performed by 
the administrative authority in charge of inspectorial supervision , through the ma rket 
inspection .  
 
Inspect orial supervision     
Article 53b
  
 
All matters related to the inspect orial supervision which are not specifically regulated by 
the present Law shall be subject to the provisions of the law governing the inspectorial 
supervision.    
 
A design holder or a person authorize d by him/her on the basis of general rules on 
representation may submit the initiative for institution of inspect orial supervision proceedings 
(hereinafter referred to as: the initiative ).  
 
The initiative  may be in dividual when related to a particular kind and quantity of goods, 
or general when related to all quantities of certain goods within a specifi ed time period.   
 
The initiative  shall include the details on the basis of which it is possible to identify the 
goods infringing a design  (infringing goods), as well as the proof that the applicant is a design 
holder and, in case of a general initiative, also the time period to which the initiative relates to .   
 
The applicant of the initiative  may also submit : 
 
1) detai ls identifying the consignment or packages;   
2) information about the place where the goods are situated or their intended destination;   
3) data on the identity of the manufacturer, importer, owner or holder of the goods ;  
4) information about the scheduled dispa tch or delivery date;   
5) information about the means of transport used ;  
6) sample of goods, photographs, etc.  
 
The competent inspector shall be obliged to act upon an initiative  and notify the 
applicant of the initiative  in writing about the supervision perf ormed and any action taken , 
within eight days from the filing of the initiative .    
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Page11  
  Where the applicant of the initiative  requests an urgent action and if initiative  contains 
sufficient information  about delivery of goods  under suspicion of infringing  design, the 
competent inspector shall notify the applicant about the supervision performed and any actions 
taken within three days from the filing of the initiative .   
 
Where the design right ceases to exist during the proceedings  upon initiative , the 
applic ant of the initiative shall notify the competent inspector  about cessation of the right to 
design .   
 
Security, costs of proceedings  and compensation of damage  
Article 53c
  
 
Whe re, in the course of inspectoral supervision proceedings, it is established t hat a 
design has been violated in production or  in trade of goods, the competent inspector shall be 
authorized to:  
 
1) temporar ily prohibit production or performing of activit ies;  
2) temporar ily seize goods . 
 
Where the measures referred to in paragraph 1 of th is Article  have been performed , the 
competent inspector shall immediately, but not later than two days  from performing of the 
measures , notify in writing the design holder and/or the applicant  of the initiative  about 
obligation to  initiate proceedings befo re the competent court for the protection of design.   
 
The design holder shall , not later than 15 days of receipt of the notification referred to 
paragraph 2 of this Article , submit to the competent inspector a proof that the proceedings 
before the compet ent court have been initiated, or that the provisional  measure has been 
ordered.   
 
Notification referred to in paragraph 2 of this Article shall include the name, seat or 
address of the person from whom the goods have been seized and, if possible, the nam e and 
address of the owner, importer and manufacturer of the goods, as well as information about  
the quantity and type of goods, etc.  
 
In the proceedings initiated upon the initiative , the competent inspector may, if he finds 
it justifiable and taking in to account the circumstances of the case, ordering of measures 
referred to in paragraph 1 of this Article , to condition  by provid ing of ap propriate security for  
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Page12 compensation of costs by the applicant  of the initiative , for the purposes of keeping the goods  
seized temporarily , or damages incurred due to omission of the applicant  of the initiative or 
unjustified seizure of goods.  
  
Costs of proceedings in itiated upon the initiative of the right holder which ended in 
favor of the subject of supervision , shall  be borne by the  applicant  of the initiative , otherwise 
such costs shall be borne by the subject of supervision .  
 
The competent inspector shall not be liable to compensate any damages resulting from  
unjustified temporary seizure of goods upon the initiati ve of the right holder.   
 
Where it is  determined in the proceedings  that the goods  upon the initiative of the right 
holder  have been seized without justification, the applicant of the initiative shall be liable to 
compensate to the owner of goods and/or person from whom the goods have been seized 
damage caused by temporarily seizure.   
 
Release and d estruction of goods  
Article 53d 
 
Where the design holder and/or  a person authorize d by him/her to submit the initiative , 
has failed to submit to the competent inspector, within a time limit specified in Article 53c 
paragraph 3 of the present Law, the proof that the  proceedings have been initiated  before the 
competent court , or that a provisional measure has been ordered, the goods seized temporarily 
shall be released to the person from whom they were seized.   
 
Where the proceedings have been initiated  before the co mpetent court,  but the court 
has not ordered any provisional measure to prohibit  production and trade in goods, the goods 
seized temporarily shall be re leased to the person from whom they were seized .  
 
Upon the request of the design holder, the person aut horized by him/her  for submitting  
the request or the person from whom the  goods were seized, the competent inspector shall 
allow samples of goods to be taken in the quantity needed as evidence in proceedings before 
the competent court.  
 
The competent inspector may destroy the goods seized temporarily , upon a court order 
or ex officio .  
  
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Page13 The competent inspector may destroy the goods seized temporarily ex officio  if the 
owner of goods or the person from whom the goods were seized temporarily is not accessibl e 
by the competent inspector within 30 days of the date of seizure of goods”.  
 
 
Article 28 
 
After Article 56a, a new article shall be added to read  as follows:  
 
„Deferred application  
Article 56b 
 
Provisions of Article 2 paragraph 5, Article 11 item 8, Article 18 paragraph 2 and Article  
41a to 41g of the present Law shall apply from the date of accession of Montenegro to the 
European Union .“ 
 
Article  29 
 
After Article 57, a new article shall be added to read  as follows:  
 
“Cessation of validity   
Article 57a 
 
Articles 22 and 23, and Article  26 paragraph  1 items 8 to 12 of the Law on the 
Enforcement of Legislation that Regulates the Protection of Intellectual Property Rights (Official 
Gazette of the Republic of Montenegro, No.  45/05 ) shall cease to be valid a s of the date of 
coming into effect of the this Law.”  
 
Entry into force                                                           
 Article 30 
 
This Law shall enter into force on the eighth day of its publication in the Official Gazette 
of Montenegro.