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 Law on Amendments to the Law on Trademarks  
 
("Official Gazette of Montenegro", No. 40/16)  
 
Article 1  
 
In the Law on Trademarks ("Official Gazette  of Montenegro ", No. 72/10, 44/12 
and 18/14) in Article 10, paragraph 2, the introductory sentence shall be 
amended to read as follows : 
 
 "The trademark holder shall be entitled to prevent other persons from using  in 
the course of trade  without his consent  the following: " 
 
In item  1 the words " earlier trademark" shall be replaced by the word  
"trademark".  
 
Item 2 shall be amended to read as follows:  
 
“any sign where, because of its identity with, or similarity to the trademark and 
the identity or similarity of the goods or services covered by the trademark and 
the sign, there exists a likelihood of confusion on the p art of the public which 
includes the likelihood of association between the sign and the trade mark.“  
 
Article 2  
 
In Article 11 , after paragraph 2 a new paragraph shall be added to read as 
follows:  
 
“Provision of paragraph 1 of this Aritcle and Article 10 p aragraphs 1 and 2 of this 
Law shall not affect provisions relating to the protection against the use of a sign 
other than for the purposes of distinguishing goods or services, where use of that 
sign without due cause takes unfair advantage of, or is detrim ental to, the 
distinctive character or the repute of the trademark.”  
 
Article 3  
 
In Article 14 , paragraph 1 item 2 after the word “production” the words: “of goods 
or of rendering of the service” shall be inserted.  
 
 
Article 4 
 
In Article 15, paragraph 1 after the word “reasons” the words: “ for the trademark 
holder to oppose further commercialisation of the goods ” shall be inserted . 
  
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 Paragraph 2 shall be amended to read as follows:  
 
“Putting on the market  of goods that are  marked  with a trademark by the  
trademark holder  or with his/her  explicit consent , in the territory of  the European 
Union or countries that are Parties to the Agreement on European Economic 
Area , shall exhaust the exclusive rights  arising  from the trademark in  relation  to 
those goods , unles s there are legitimate  reasons  for the trademark holder to 
oppose further commercialisation of the goods,  based on which the trademark 
holder retains  the exclusive rights  arising  from the trademark .”  
 
Article  5 
 
In Article 16 at the end of paragraph 2, the full stop  shall be deleted and added 
the following words  "or to oppose its use."  
 
Article 6 
 
In Article 23, paragraph 3 is amended a nd shall read: 
 
"The applicant proves the Union Priority Right with the submission  of a certificate 
of priority  right issued by the competent authority of a Member State of the Paris 
Union or Member State  of the World Trade Organization and the translation of 
that certificate to  the Montenegrin language, which is certified by a court 
interpreter."  
 
After paragraph 3, a new pa ragraph shall be added to read as follows : 
 
"The applicant is required to submit a certificate and a translation of the 
certificate referred to in paragraph 3 of this Article no later than three months 
from the date of filing of the request  for the recogni tion of the Union Priority 
Right."  
 
Article 7 
 
In Article 31, paragraph 2 shall be amended to read as follows : 
 
 "An opposition  referred to in paragraph 1 of th e present  Article may be filed by 
the holder of the earlier  trade mark or the licensee who has th e approval of the 
trademark holder and by the holder of the right to the personal name, portrait, 
copyright or other industrial property rights from Article 8 paragraph 2 of this law."  
 
Article 8 
 
In Article 35 after paragraph 6 two new paragraphs shall be  added to read as 
follows:  
  
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 "The competent authority may issue a trademark  certificate , at the request of the 
right holder , along with proof of the payment of the prescribed administrative fee.  
 
The c ontent of the trademark certificate referred to in parag raph 7 of the present  
Article shall be prescribed by the Ministry. "  
 
Article 9 
 
In Article 39 after paragraph 4 a new paragraph shall be added to read as 
follows : 
 
 "License agreement referred to in paragraph 1 of t he present  Article, the transfer 
of the trademark, the pledge and the levy of execution produce the legal effect 
against  the third parties after entry in the Register."  
          
In paragraph  5, the words " in the course of license validity, in respect of the 
registered trademark’s representation , manner in which the trademark is being 
used " shall be replaced by the words  "with regard to its duration, the form 
covered by the registration in which the trademark may be used ." 
 
Current paragraphs 5 and 6 shall become paragraphs 6 and 7.  
 
Article  10 
 
After Article 41 a new Article shall be adde d to read as follows : 
 
"Trademark application as a property right  
 
Article  41a 
 
The provisions of Articles 39, 40 and 41 of this Law shall also apply to the 
applications for the trademark registration."  
 
Article  11 
 
In Article 50a, paragraph 3, the words " of the date of receiving notice " shall be 
replaced by the words : "from the date of issuance of a written notice of the 
competent authority".  
 
 
 
  
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Article  12 
 
In Article 50b, paragraph 1, the words : "the receipt of a written notice " shall be 
replaced by the words : "the date of issuance of written notice of the competent 
authority".  
 
Article 13  
 
In Article  53, paragraph  1, the words: " may render " shall be replaced by  the 
words : "shall render".  
 
In paragraph  3, the words : "may render" shall be replaced by  the words : "shall 
render " and the word "type" shall be  replaced by  the word "nature" . 
 
 
Article  14 
 
In Article 55 after paragraph 3 a new paragraph shall be added to read as 
follows : 
 
"A fine  referred to in paragrap hs 2 and 3 of th e present  Article may be imposed 
to a legal entity in the amount from 2,000 euros to 10,000 euros, to an 
entrepreneur from 500 euros to 3,000 euros, a nd to  natural person and 
responsible person in the legal entity in the amount from 250 eur os to 1,500 
euros. " 
 
Current parag raphs  4 to 7  shall become paragraphs  5 to 8.  
 
 
Article  15 
 
In Article 55a, paragraph 2, the word "only" shall be  replaced by the word  
"principally ". 
 
Article  16 
 
In Article 59a, the words : "Articles  55 to 59 and Article 59 b "shall be  replaced by 
the words:  "Articles 55 and 55a ”. 
 
Article  17 
 
In Article 60, paragraph 2 item 1 the words : "with Montenegrin citizenship 
residing in Montenegro " and the comma shall be deleted , and after the word s: 
"university degree ", shall be add ed the following words :  "(VII1 level of education 
qualifications)  ".  
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In item 3, the words : “with its legal seat in Montenegro “shall  be deleted.  
 
Article  18 
 
In Article 62a at the end of paragraph 2, the full stop  shall be deleted and added 
the words : "through the market inspection.".  
 
Article  19 
 
In Article 62b after paragraph 4, four new paragraphs shall be added to read as 
follows : 
 
"The applicant referred to in paragraph 2 of this Article may also submit:  
 
1) details based on which can be identified t he shipment or the packing;  
2) information on the place where the goods are located and/or the planned 
destination;  
3) the name of the manufacturer, importer, owner or holder of the goods;  
4) data on the estimated date of delivering or shipment of goods;  
5) information on the means of transport used for the transportation;  
6) sample of the goods, photos and the like.  
 
The competent inspector is obliged to  act upon the request  referred to in 
paragraph 2 of this Article and  to inform the applicant in writing  about  the 
performed inspection  control  and possibly taken measures, within eight days 
from the date of filing the request . 
 
If the request referred to in paragraph 2 of this article proposes to urgently take 
measures  and if the request  contains sufficient information on deliveries of goods 
for which there is reasonable suspicion that the goods infring e the trademark, the 
competent inspector shall, within three days from submission of the request , 
notify the applicant  about  the performed inspection  control and about  the possibly  
taken  measures . 
 
The applicant referred to in paragraph 2 of this Article shall inform the competent 
inspector about the termination of the right to the trademark, if such right 
terminates during the proceedings upon the request. "  
 
Article  20 
 
In Article 62c, paragraph 1 shall be  amended to read as follows : 
 
"When in the  inspection control proceedings  competent inspector assesses that 
during the production or the turnover of goods the trademark  has been infringed , 
he is authorized to:   
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1) Temporarily  prohibit the production or carrying out  activities;  
2) Temporarily  seize the goods."  
 
After paragraph 1, two new paragraphs  shall be added  toread as follows : 
 
"In case of under taking the measures referred to in paragraph 1 of the present  
Article, the competent inspector shall immediately, and no later than two days 
after under taking the measures, notify in written form the trademark holder or the 
applicant of the request about  the obligation to launch the procedure for the 
protection of the  trade mark before the competent Court , and holder of a 
trademark shall, not later than 15 days from the date of receipt the notification, 
submit  to the competent inspector  the evidence on the procedure launched 
before the competent court or imposed  provisi onal measure . 
 
The noti fication  referred to in paragraph 2 of t he present  Article shall contain 
information about the name and address or the  seat of the person from whom the 
goods were seized and, if possible, the name and address of the owner, importer 
and manufacturer of the confiscated goods, as well as the information s on the 
quantity and type of goods, and o ther information of importance. "  
 
At the end of paragraph 3 the full stop  shall be deleted and words : "otherwise 
they shall be borne by the contr olled  entity"  shall be added . 
 
After paragraph 5, three new paragraphs shall be added to read as follows : 
 
"The temporarily  seized goods will be returned to the person from whom it was 
seized if:  
 
1) The holder of a trademark, or the person who has his authorization  to submit  
the request , within the period referred to in paragraph 2 of this Article , fails to 
submit to the competent inspector the evidence on the procedure launched 
before the competent court or imposed provisional  measures;  
2) the procedure is launched  before the competent court, and the court has not 
impose  a provisional  measure on prohibiting the production and trade of goods.  
 
Upon  the request of the trademark holder, the person wh o has his authorization  
to submit the request or the person s from whom the goods were seized, the 
competent inspector shall allow the sampling of the goods in a quantity  that is 
required as evidence  in the proceedings before the competent court.  
 
The competent inspector may destroy the temporarily seized goods upon : 
1) order of a court, or  
2) ex officio  if the owner or person from whom the goods are temporarily seized, 
is not accessible  to the competent inspector within 30 days from the day of  the 
seizure of the goods. "   
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The current paragraphs  2 to 5 shall become p aragraphs 4 to 7.  
 
Article  21 
 
After Article 65a, a new Article shall be added to read as follows : 
 
„Article  65b 
 
From the date of accession of Montenegro to the European Union:  
 
1) as earlier trademark under Article 7, paragraph 1 of this law shall be  
consid ered:  
a) the Community trademark and application for a Community trademark;  
b) Community trademark for which seniority  is duly claimed , in respect  to 
the trademarks referred to in Article 7 paragraph 2 items  1 and 2 of this  
law, even where  the latter trade mark  has ceased;   
2) a trademark for which the application for registration  has been filed shall 
not be registered  if such trademark is identical or similar to an earlier 
Community trademark, and the registration has been requested for goods 
or services which  are not similar to the goods or services for which the  
earlier Community trademark has been registered , where the earlier 
trademark has a reputation in the Community  and whe re the use of the 
later trademark without due cause  will take unfair advantage of,  or be 
determental to,  the distinctive character or reput e of the earlier 
Community trademark;  
3) national trademark is a trademark registered in the procedure before the 
competent authority in accordance with the provisions of this law; 
4) national tradem ark application is the application for the registration of 
the trademark submitted to the competent authority in accordance with the 
provisions of this law; 
5) applications for a Community trademarks submitted prior to the date of  
the accession of Monteneg ro to the European Union and the Community 
trademarks acquired prior the date of accession of Montenegro to the 
European Union, shall have the effect in the territory of Montenegro;  
6) national trademark  can not  be declared invalid  for the reasons of the  
conflict with the earlier Community trademark if the holder of the earlier 
Community trademark did not actually use the Community trademark in 
the European Union in relation to the goods or services for which it is 
registered or if it stopped using it in an uninterrupted  period of five years, 
unless there are justifiable reasons for non -use;  
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 7) the holder of an earlier trademark registered in Montenegro or of an 
earlier trademark registered in accordance with the ratified international 
treaties , who submit s an application for the registratio n of an identical 
trademark as the  Community trademark for the goods  or services which 
are identical with the goods or services for which the earlier trademark has 
been  registered, or contained in these goods  and services , may claim  the 
seniority of an earlier trademark for a Community trademark in respect  to 
a trademark registered in Montenegro;   
8) the holder of a Community trade mark which is the holder of an earlier 
identical trademark registered in Montenegro or a trademark registered in 
accordance with the ratified international treaties  for the goods or services 
which are identical with the goods or services for which the earlier 
trademark has been  registered, or contained in those good s or services, 
may claim  the sen iority of an earlier trademark in respect  to a trademark 
registered in Montenegro;  
9) the seniority of the national trademark may be required in respect of a 
Community trademark if:  
a) the national trademark is acquired before the date of accession of 
Mont enegro to the European Union, and  
b) the national trademark has priority in respect to  a Community trademark 
for which the seniority is claimed ; 
10) in cases where a Community trademark application is submitted  to the 
competent authority, the competent aut hority shall enter the date of filing 
the application and forward it, without examination, to the Office for 
Harmonization in the Internal Market, with the payment of the prescribed 
administrative fee and the costs  for forwarding;  
11) the competent authori ty shall, acting upon the request for 
transformation of the  application for a Community trademark or the 
Community trademark into the national trademark application, carry out 
the procedure for registration of the trade mark in accordance with the 
provision s of this law, and the applicant shall pay the prescribed 
administrative fees and the procedural costs ; 
12) the competent authority shall, upon the receipt of the request  referred 
to in item 11 of the present  Article , invite the applicant to submit, within  60 
days from the day of the receipt of the invitation , the  translation of the 
application for a Community trademark into Montenegrin  language ; 
13) the holder of a national trademark , acquired before the date of 
accession of Montenegro to the European Unio n, or acquired on the basis 
of national trademark application filed prior to the date of accession of 
Montenegro to the European Union , may, by a  lawsuit , request the  
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 prohibition  of use in Montenegro of the Community trademark, which in 
accordance with item 5 of th e present  Article shall have the effect on 
territory of Montenegro if the use of a Community trademark is contrary to 
the use of national trademark, where he is obliged to  prove that the 
Community trademark conflicts with his national trademark;  
14) provisions on legal protection in case of an infringement of the national 
trademark shall apply to the legal protection in case of infringement of a 
Community trademark;  
15) The holder of an earlier national trade mark which in an uninterrupted  
period of  five years knowingly allows the use of a later Community 
trademark shall not be entitled to file an request  for the declaration  of 
invalidity of the later trademark, or to oppose the use of the later 
trademark in respect  of goods or services for which that later trademark 
has been  used , unless the application for  the registration of the later 
Community trademark was not filed in good faith;  
16) The Commercial Court shall be the competent court to decide in the 
first instance in litigations  relating to the Community trademark, in 
accordance with the law governing the establishment, organization and 
jurisdiction of the courts;  
17) The Court of Appeal shall be the competent court to decide in the 
second instance in litigations  relating to the Community tradema rk, in 
accordance with the law governing the establishment, organization and 
jurisdiction of the courts. " 
 
Entry into force  
Article 22 
 
This law shall come into force eight days after publication in the "Official 
Gazette of Montenegro".