Pursuant to Article 82 paragraph 1 item 2 and paragraph 1 of Article
91 of the Constitution of Montenegro, the Parliament of Montenegro
in its 24 th
convocation at the seventh session of the second regular
sitting in 2010, on 22 December 2010, hereby passes the
LAW
ON LEGAL PROTECTION OF INDUSTRIAL DESIGN
I. BASIC PROVISIONS
Subject Matter
Article 1
The present law shall govern the registration and legal
protection of industrial design.
Definition and Effect of the Design
Article 2
Industrial design shall be the appearance of the whole or a
part of a product, resulting from its features, in particular the lines,
contours, colors, shape, texture and/or material the product is
composed of and its ornamentations (hereinafter referred to as: the
Design).
The product referred to in paragraph 1 of the present Article
shall mean any industrial or handicraft product, including parts
intended to be assembled into a complex product, product
packaging, get-up, graphic symbols and typographic typefaces,
excluding computer programs.
A complex product referred to in paragraph 2 of the present
Article shall mean any product composed of replaceable multiple
parts permitting product disassembly and reassembly.
Designs registered with the International Bureau of the World
Intellectual Property Organization in accordance with The Hague
Agreement Concerning the International Registration of Industrial
Designs (hereinafter referred to as: the Hague Agreement) shall also
be effective in Montenegro.
Equality of Foreign and National Persons
Article 3
Foreign legal and natural persons shall have rights with
respect to design registration and legal protection in Montenegro
equal to those of national legal and natural persons, if this results
from ratified international agreements or from the reciprocity
principle.
Proof of the existence of reciprocity referred to in paragraph 1
of the present Article shall be provided by the person claiming
reciprocity.
In any proceedings before a competent authority, a foreign
legal or natural person shall be represented by a legal or natural
person (hereinafter referred to as: the Representative) entered into
the Register of Representatives maintained by the competent
authority in charge of intellectual property matters (hereinafter
referred to as: the Competent Authority) or a lawyer entered into the
Montenegro Bar Association Register.
II. DESIGN REGISTRATION REQUIREMENTS
Requirements for Design Protection
Article 4
A Design may be protected if it is new and has an individual
character.
A Design applied to or contained in a product which
constitutes a component of a complex product shall be considered to
be new and to possess individual character only if such component
of the product, after being incorporated into the complex product,
remains visible during normal use of that product and if the visible
features of the component part of the product themselves meet the
requirements concerning novelty and individual character.
Normal use referred to in paragraph 2 of the present Article
shall mean the use by the end user of the product, excluding product
maintenance, servicing or repair work.
Design Novelty
Article 5
A deign shall be considered new if no identical design has
been made available to the public prior to the design registration
application filing date (hereinafter referred to as: the Application) or
if the priority right was claimed prior to the date of registered
priority right.
A design shall be deemed to be identical if its features differ
solely in immaterial details.
Individual Character of the Design
Article 6
A design shall be considered to have individual character if
the overall impression it produces on the informed user differs from
the overall impression produced on such a user by any other design
which has been made available to the public prior to the registration
application filing date or if the priority right was claimed prior to the
date of registered priority right.
In assessing individual character of the design, the degree of
freedom of the author of the design (hereinafter referred to as: the
Designer) in creating the design shall be taken into consideration.
Disclosure
Article 7
Within the meaning of Articles 5 and 6 of the present Law, a
design shall be deemed to have been made available to the public if
it has been disclosed by means of registration or otherwise,
exhibited, used in trade or otherwise disclosed prior to the date of
filing the application for design registration or if the priority right
was claimed prior to the date of registered priority right, except
where these events could not reasonably have become known in the
usual course of business to the groups in Montenegro specialized in
the given sector.
The design shall not be deemed to have been made available
to the public within the meaning of paragraph 1 of the present
Article, if it has been disclosed to another person under conditions
of confidentiality related to the industrial design.
The design shall not be deemed to have been made available
to the public, within the meaning of Articles 5 and 6 of the present
Law, if a design has been disclosed by the designer, his/her legal
successor, or a third person as a result of an information received
from the designer or his/her legal successor, or as a result of an
action taken by the designer or his/her legal successor, provided
that the time period from the design disclosure date to the design
registration application filing date or to the date priority right has
been claimed, is less than 12 months, if the industrial design has
become available to the public as a result of abuse in respect of the
author or his/her legal successor.
Design Register and Official Gazette
Article 8
Design Register (hereinafter referred to as: the Register) and
application records shall be maintained by the competent authority.
The Register referred to in paragraph 1 of the present Article
shall contain, in particular: the data about the author of the design,
the design registration number, the design registration application
filing date, the priority right claimed, the application disclosure date,
design registration date, amendments, Register entry date,
international registration data, design protection renewal data and
the registered design lapse date.
Application records referred to in paragraph 1 of the present
Article shall, in particular contain information referred to in Article
25 paragraph 1 of the present Law.
At the request of the interested party and upon payment of the
prescribed administrative fees and duties, the competent authority
shall issue an extract from the Register and the industrial design
validity certificate.
The data from the Register shall be published in the Official
Gazette of the competent authority.
The competent authority of the state administration in charge
of intellectual property issues (hereinafter referred to as: the
Ministry) shall prescribe in more detail the content and procedure
for maintenance of the Register and the application records referred
to in paragraph 1 of the present Article.
Relation to Other Laws
Article 9
Unless otherwise prescribed by the present Law, the
provisions of the law governing general administrative procedure
shall be applicable to the design registration and protection
procedure.
An appeal against the decisions rendered by the competent
authority may be filed with the Ministry.
In the procedure before the competent authority, the
prescribed administrative fees and duties in keeping with the law
governing administrative fees and duties, special procedural costs
and information provision services fees, shall be charged.
The amount of special procedural costs and fees for
information service provision shall be determined by the
Government of Montenegro (hereinafter referred to as: the
Government).
Protection Excluded Due to Technical Function
Article 10
Industrial design right shall not subsist with respect to
appearance of a product that is solely dictated by its technical
function.
Industrial design right shall not subsist with respect to
appearance of a product that must necessarily be reproduced in its
exact form and dimensions in order to permit the product to be
mechanically connected to or placed in, around or against another
product, so that either product may perform its function.
Notwithstanding paragraph 2, the industrial design rights
may, under the conditions set out in Articles 5 and 6 of the present
Law, subsist with respect to a design enabling multiple assembly or
connection of mutually interchangeable products within a modular
system.
Industrial Design Protection Exclusion
Article 11
The following designs may not be registered and protected:
1) Those which are contrary to public interest or accepted
moral norms;
2) Designs not meeting the criteria referred to in Articles 2, 4,
5, 6 and 7 of the present Law;
3) If the applicant or design holder is not authorized to
acquire the design pursuant to the present Law;
4) If the design is identical to an earlier design disclosed to
the public following the application filing date or if the priority right
has been claimed, following the date of the registered priority right
and which has been registered in Montenegro earlier or for which
registration has been filed earlier;
5) If in the process of creating a design a sign for
distinguishing goods or services has been used, while the owner of
the earlier right was entitled to prohibit such usage;
6) Designs containing signs, symbols, badges or coat of arms
and the like referred to in Article 6 bis
of the Paris Convention on the
Protection of Industrial Property (hereinafter referred to as: the Paris
Convention) and those containing state coat of arms, a flag or a
symbol, name or abbreviated name of a country or an international
organization, religious or national symbols as well as imitations
thereof.
Rights of Designers
Article 12
The right to the industrial design protection shall be vested in
the designer, or his legal successor.
A person providing only technical assistance in the process of
creating a design shall not be considered a designer.
If two or more persons jointly created a design, all designers
shall be entitled to industrial design protection rights.
If the design has been developed by a person while
performing his/her regular work related activities or when acting on
order and instructions of their employer, the employer shall be
entitled to file an application unless otherwise stipulated in the
contract.
Designer Indication
Article 13
Designer shall be entitled to be cited in all documents in the
process of registration and in the Register as the designer, in much
the same way as does the applicant or holder of the design.
If more than one designer or a team of designers jointly
created a design, all designers individually or the team of designers
shall be entitled to the rights referred to in paragraph 1 of the
present Article.
III. SCOPE AND LIMITATIONS OF INDUSTRIAL DESIGN
RIGHTS
Scope of the Industrial Design Rights
Article 14
The scope of the registered industrial design protection shall
include appearance of the product and/or the impression it produces
on the informed user which differs from the impression produced on
such a user by any other design.
When determining the scope of industrial design rights in any
dispute that might arise, the court shall take into account freedom of
the author in creating the industrial design, within the meaning of
the Article 6 paragraph 2 of the present Law.
Exclusive Rights
Article 15
The holder of the industrial design rights shall have the
exclusive right to use the registered industrial design and to prevent
any third party not having his consent from using it.
The use referred to in paragraph 1 of the present Article shall
include: making, offering, putting on the market, importing,
exporting or using the product containing the design or a product to
which the design has been applied or stocking such a product for
those purposes.
Should the disclosure of the registered design be deferred
pursuant to Article 35 of the present Law, the design holder shall be
entitled to prevent other persons from taking actions referred to in
paragraph 2 of the present Article, if such actions are aimed at
copying the registered design.
Limitation of Exclusive Rights
Article 16
The holder of industrial design rights may not prevent other
person from performing the following activities:
1) Activities performed for private, non-commercial and
experimental purposes;
2) Reproduction for the purpose of making citations or
teaching, provided such activities are compatible with the fair
business practices and provided they do not unduly jeopardize the
normal exploitation of the industrial design, as well as provided that
the source from which the industrial design has been obtained has
been specified.
Exclusive rights to a design shall not pertain to:
1) ship and aircraft equipment produced by virtue of the
protected industrial design and serving exclusively for the
functioning of ships or aircrafts registered in another country, when
they are temporarily on the territory of Montenegro;
2) Import of spare parts and accessories to Montenegro, for
ships and aircraft repair purposes.
Earlier Use of the Design
Article 17
A person who has been able to prove that prior to the
application filing date or prior to the priority right registration date,
if claimed on the territory of Montenegro, he/she has already
commenced in good faith with the use of the protected industrial
design in manufacturing, or has made all the necessary preparations
to commence with the use of the design included in the scope of
protection, provided that such design is not the result of copying of
a protected industrial design, shall have right of prior use.
Pursuant to the right of prior use, another person shall be
entitled to use the industrial design only for purposes it was initially
used for in the manufacturing or for the purpose of necessary
preparations for the commencement of use of design prior to the
application filing date or prior to the priority right registration date,
if the priority right has been claimed.
The person entitled to the right of prior use of the design shall
not be entitled to transfer the right of industrial design use by virtue
of a license agreement.
The right of prior use shall not be transferable, unless such
right is transferred together with a company, part of the company,
company operational unit (workshop) or branch of the company in
which the use of such industrial design has been prepared or
commenced, in keeping with paragraph 1 of the present Article.
Exhaustion of Rights
Article 18
If the holder of industrial design rights in Montenegro puts in
the market a product comprising a protected industrial design and/or
a product designed in accordance with a protected industrial design,
or if the holder of the industrial design right authorizes another
person in Montenegro to put such product in the market, the holder
of industrial design rights shall not be entitled to prevent third
parties from further disposing of that product which has been
purchased in the course of legal trade.
The exhaustion of rights referred to in paragraph 1 of the
present Article shall not apply in the event there exists a legitimate
interest on the part of the holder of the industrial design right to
oppose further trading in the product comprising the protected
industrial design, or the product which has been designed in
accordance with the protected industrial design, in particular if a
defect has meanwhile occurred in the product or other changes
appeared in the features of the product.
The exhaustion of rights referred to in paragraph 1 of the
present Article may be extended beyond Montenegro in keeping
with ratified international treaties.
Relation to Other Forms of Protection
Article 19
Provisions of the present Law shall not affect any existing
rights with respect to trademarks or other distinction signs,
unregistered designs, typographies, patents and provisions
governing civil law protection or competition protection.
Copyright and Legal Protection of Designs
Article 20
Registered design may also enjoy protection pursuant to the
legislation governing the copyright as of the date of its creation, or
as of the date of fixation in a certain form.
IV. PROPERTY RIGHTS PERTAINING TO INDUSTRIAL
DESIGN
License
Article 21
The holder of the industrial design rights may grant rights to
registered industrial design on the basis of a license agreement.
At the request of the industrial design rights holder or the
licensee, the license agreement referred to in paragraph 1 of the
present Article, shall be entered into the Register.
The entry into the License Agreement Register, referred to in
paragraph 1 of the present Article, shall be done by a special
decision.
The data contained in the decision on the entry into the
License Agreement Register shall be published in the Official
Gazette.
The regulations issued by the Ministry shall prescribe in more
detail the content of the request referred to in paragraph 2 of the
present Article and the documentation submitted together with the
request.
Assignment
Article 22
The holder of the industrial design rights may assign to
another person the right to the industrial design by virtue of an
agreement, either entirely or in part.
The assignment of the industrial design right shall be entered
into the Register upon request of one of the contracting parties.
The entry of the assignment of the industrial design rights into
the Register shall produce legal effect in relation to third parties.
The data contained in the decision on the entry of the
assignment of the industrial design rights into the Register shall be
published in the Official Gazette.
The regulations of the Ministry shall prescribe in more detail
the content of the request referred to in paragraph 2 of the present
Article and the documentation submitted together with the request.
Pledge, Enforced Execution and Bankruptcy
Article 23
A registered industrial design may be a subject of a pledge
based on a pledge agreement and subject to enforced execution.
The pledge right shall be entered into the Register at the
request of a pledger or the pledgee.
The court in charge of enforced execution ex officio, shall be
obliged to notify the competent authority on the launching of the
design enforced execution procedure for the purpose of entry into
the Register.
Pledge and enforced execution shall be published in the
Official Gazette.
Pledge and enforced execution shall produce legal effect in
relation to third parties following the entry into the Register.
Where the registered design is subject of bankruptcy, the
information on initiating the bankruptcy proceeding shall be entered
into the Register and published in the Official Gazette at the request
of the competent court.
Regulations governing pledge shall be applicable to pledge or
enforced execution procedures.
The regulations issued by the Ministry shall prescribe in more
detail the content of the request referred to in paragraph 2 of the
present Article and the documentation submitted together with the
request.
V. INDUSTRIAL DESIGN REGISTRATION PROCEDURE
Initiation of the Industrial Design Registration Procedure
Article 24
The industrial design registration procedure shall be initiated
by filing an application to the competent authority.
Changes to the application may be effected at the request of
the applicant or ex officio only where a correction to the applicant’s
name or address must be made, the correction to the text or a
certified copy must be effected, provided that these changes have no
effect on the extension of the scope of the protection.
The applicant may withdraw from the registration procedure
at any point in time, either entirely or partially, and the competent
authority shall render an official decision thereof.
The industrial design registration application and
documentation shall not be available to the public without the
applicant’s consent prior to the industrial design disclosure date.
Application Content
Article 25
The application shall include:
1) Industrial design registration request;
2) Information about the applicant;
3) The industrial design depiction (appearance) suitable for
reproduction;
4) Indication of the product containing the design or to which
the design will be applied;
5) Information on the authorized representative if the
applicant has a representative;
6) Information on the joint authorized representative in case
of joint applications.
If the subject of the application is a two-dimensional design
and should the application include a request to defer the design
publication pursuant to Article 35 of the present Law, the depiction
of the design referred to in paragraph 1 item 3 of the present Article,
may be substituted with a sample.
In addition to data referred to in paragraph 1 of the present
Article the application may contain the following:
1) Product appearance description or sample;
2) Request to defer the registered industrial design publication
in keeping with Article 35 of the present Law;
3) Product classification according to the International
Classification prescribed by the Locarno Agreement on Establishing
International Classification of Industrial Designs (hereinafter
referred to as: the International Classification);
4) Information about the designer or a team of designers or
statement made by the designer or team of designers that he/she or
they do not wish to be listed in the application;
5) Information on the priority right referred to in Articles 29
and 30 of the present Law.
The application containing elements referred to in paragraph
1 items 1, 2 and 3 of the present Article shall bear the application
filing date and shall be entered into application records.
Should the application not contain elements referred to in
paragraph 4 of the present Article, the competent authority shall
notify the applicant thereof instructing him/her to remedy the
detected deficiencies within the time period of sixty days from
receiving the notification.
Should the applicant fail to remedy the detected deficiencies
within the time period referred to in paragraph 5 of the present
Article, the competent authority shall render a decision
acknowledging the date when the deficiencies have been remedied
as the application filing date.
Should the applicant fail to rectify the application within the
time period referred to in paragraph 5 of the present Article, the
application shall be considered withdrawn, and the competent
authority shall render a conclusion to that effect.
The time limit referred to in paragraph 5 of the present Article
may be extended at the request of the applicant for a period not to
exceed sixty days.
Where a multiple application has been filed, the competent
authority shall examine whether the application meets the conditions
referred to in paragraph 4 of the present Article and Articles 26 and
27 of the present Law.
Proof of payment of administrative fees and duties shall be
submitted with the application.
The Ministry shall prescribe in more detail the content of the
request and application.
Multiple Applications
Article 26
Should the application contain a request for the registration of
multiple designs (hereinafter referred to as: Multiple Application),
all the product which should contain the design or to which the
design should be applied must be classified into the same product
class in keeping with the International Classification.
The multiple application shall contain the overall number of
designs for which registration is sought.
Following the registration, all designs contained in a multiple
application may be processed separately.
A separated design may be the subject of exercising of rights,
subject of license agreement, subject of pledge and enforced
execution, bankruptcy, refusal, extension of protection, transfer of
rights, deferment of publication or nullification.
Division of Multiple Applications
Article 27
The applicant filing an application containing the request for
registration of multiple designs may file a request seeking division
of a multiple application into several individual or multiple
separated applications.
Each of the separated applications referred to in paragraph 1
of the present Article shall be issued a new application number and
registered in the applications records, but shall retain the date of the
filing of the original multiple application and the right of priority
thereof.
A decision shall be rendered with respect to the division of
the application, which shall indicate the number(s) of new
applications, industrial designs remaining in the original multiple
application, as well as the industrial designs which are to remain in
the separated application(s).
The Ministry shall prescribe particulars of the request referred
to in paragraph 1 of the present Article and documentation
submitted with the request.
Priority Right
Article 28
As of the filing date of an orderly and complete application
the applicant shall enjoy a priority right over all other persons who
have subsequently filed an application for the identical or similar
industrial design.
Following the payment of the required administrative fees and
duties, the competent authority shall issue a priority right certificate
at the request of the applicant or the industrial design holder.
Union Priority Right
Article 29
An applicant having filed orderly and complete application
effective in any member state of the Paris Union for the Protection
of Industrial Property (hereinafter referred to as: the Paris Union) or
the World Trade Organization member state, shall be entitled to
claim the initial application filing date when filing an application in
Montenegro for the same industrial design, provided that the
application in Montenegro has been filed within six months of the
initial application filing date (hereinafter referred to as: the Union
Priority Right).
The application of an applicant claiming the Union Priority
Right referred to in paragraph 1 of the present Article shall contain
information on the date of filing, application filing number and the
state in which such application has initially been filed.
The applicant shall prove the Union Priority Right by filing
the priority right certificate issued by a competent authority of the
Paris Union member state or World Trade Organization member
state, which has been translated into the Montenegrin language.
Exhibition Priority Right
Article 30
The applicant who has exhibited a product, containing the
industrial design or to which that particular industrial design has
been applied, at an official or officially recognized international
exhibition in any member state of the Paris Union or in any member
state of the World Trade Organization, may request that the date
when the product has been exhibited for the first time be
acknowledged as the first filing date of the application, provided
that the application in Montenegro has been filed within six months
from that date.
Within the meaning of paragraph 1 of the present Article, an
international exhibition shall mean any exhibition pursuant to the
Convention on International Exhibitions.
The applicant claiming exhibition priority right shall attach to
the application the certificate issued by the competent authority of a
member state of the Paris Union or member state of the World
Trade Organization which has been translated into the Montenegrin
language that the fair or exhibition was international in its character,
indicating data on the type of exhibition, venue, date of opening and
closing of the exhibition and the date of the first exhibiting the
product stated in the application.
Order of Application Examination
Article 31
The applications shall be examined in the order determined
by the date of their filing.
Notwithstanding the provision of paragraph 1 of the present
Article, the application may be examined in an expedited procedure:
1) In case of the procedure initiated before a court or an
inspection authority, or customs related procedure at the request by
the court or the competent authority;
2) If the application for international registration of an
industrial design has been filed.
Application Examination
Article 32
Following the entry of the application into the Application
records, the competent authority shall examine whether the
application meets the requirements referred to in Article 25 of the
present Law.
Where the application has been found not to meet the
requirements referred to in paragraph 1 of the present Article, the
competent authority shall notify and request the applicant to provide
observations on the detected deficiencies within a time period of
sixty days from the day the notification has been received.
Upon the request of the applicant, the competent authority
may extend the time limit referred to in paragraph 2 of the present
Article for a period not exceeding thirty days.
Should the applicant fail to provide observations within the
time period referred to in paragraph 2 of the present Article, the
application shall be deemed as having been withdrawn, and the
competent authority shall render a decision to stay the proceedings.
Design Registration
Article 33
Where the application was found to meet the registration
requirements referred to in Article 32 of the present Law, the
competent authority shall call on the applicant to pay administrative
fees and duties for the industrial design registration, the costs of
industrial design publication and the fee for maintenance or
industrial design protection for the first five years of registration,
within a time period of thirty days from the day the notification has
been received.
Should the applicant fail to submit proof of the payments
within the time period referred to in paragraph 1 of the present
Article the application shall be considered as having been
withdrawn.
Entry of an Industrial Design into the Industrial Design
Register
Article 34
The issuance of the decision on the registration of the
industrial design, entitles the applicant to the industrial design.
The date of issuing the decision on the registration of the
industrial design shall be considered as the date of entry into the
Register.
Data from the decision referred to in paragraph 1 of the
present Article shall be published in the Official Gazette.
The regulations issued by Ministry shall prescribe the
particulars referred to in paragraph 3 of the present Article which
are published by the Official Gazette.
Deferred Publication of the Registered Design
Article 35
The applicant may submit a request accompanying the
application, to defer the publication of the registered industrial
design for a period of thirty months from the application filing date
or from the acknowledged priority right, if the priority right has
been claimed.
If the deferment of the industrial right registration publication
has been sought, the information that the given industrial design has
been registered, information on the industrial design holder,
application filing date and a note stating that the deferment of
publication of the registered industrial design has been sought, shall
be published in the Official Gazette.
The industrial design holder shall be entitled to request the
publication of the design prior to the deadline expiry referred to in
paragraph 1 of the present Article following the payment of the
prescribed administrative fees and duties.
In case of multiple applications the industrial design
publication deferment may be sought only for certain designs listed
in the application.
Entry of Changes into the Register
Article 36
At the request of a holder of industrial design rights the
competent authority shall render a decision entering changes which
occurred following the industrial design registration in the
appropriate Register of the competent authority, in particular
changes in the name or address of the holder of the industrial design
right and assignment of rights.
Changes referred to in paragraph 1 of the present Article shall
not alter the appearance and scope of the industrial design
protection.
Changes entered into the Register shall be published in the
Official Gazette.
The regulations issued by the Ministry shall prescribe in more
detail the content of the request referred to in paragraph 1 of the
present Article and the documentation submitted together with the
request.
Continuation of the Procedure
Article 37
The applicant or another person who has failed to perform an
action within a specified period of time may file a request with the
competent authority for the continuation of the procedure.
The procedure continuation request may be filed within a
time period of sixty days from the expiry of the deadline within
which the action should have been undertaken.
The competent authority shall allow the continuation of the
procedure, provided that the loss of right has not come into effect,
provided that the applicant effects payment of prescribed
administrative fees and duties for the continuation of the procedure
and provided that the applicant undertakes the action within the time
period referred to in paragraph 2 of the present Article.
The continuation of the procedure may not be requested for
failing to observe the filing deadlines for the following:: restitutio in
integrum request referred to in Article 38 of the present Law,
industrial design renewal application referred to in Article 39 of the
present Law, priority right acknowledgement application referred to
in Articles 29 and 30 of the present Law and the request referred to
paragraph 2 of the present Article.
Should the competent authority approve the request for the
continuation of the procedure referred to in paragraph 1 of the
present Article, it shall be considered that the consequences of
failing to observe the filing deadlines have not come into effect and
shall nullify official decisions it had rendered in respect of failure to
observe the filing deadlines.
Restitutio in integrum
Article 38
The applicant or industrial design rights holder who was, due
to justified reasons, unable to perform a certain action in the
procedure before a competent authority, may request restitutio in
integrum if the omission resulted in the loss of rights.
The request for restitutio in integrum referred to in paragraph
1 of the present Article shall be submitted in writing within a time
period of sixty days from the day reasons for omissions have ceased
to exist.
The request for restitutio in integrum referred to in
paragraphs 1 and 2 of the present Article may not be submitted
following the expiry of a time period of one year from the day of
omission having taken place.
The applicant filing the request for restitutio in integrum shall
be obliged to provide reasons due to which he/she has been
prevented from performing the given activities.
Proof of payment of the prescribed administrative fees and
duties shall accompany the request for restitutio in integrum.
The request for restitutio in integrum may not be filed
following the expiry of the time period referred to in paragraph 2 of
the present Article and Articles 29, 30 and 37 of the present Law.
VI. DURATION, RENEWAL AND CESSATION OF THE
INDUSTRIAL DESIGN RIGHTS
Duration of Protection of a Registered Industrial Design
Article 39
The protection of industrial design rights shall last for five
years commencing from the application filing date and shall be
subject to renewal periods of five years, not to exceed twenty five
years.
The industrial design rights holder seeking the industrial
design protection renewal shall be obliged to submit the request for
the industrial design protection renewal accompanied by proof of
payment of required administrative fees and duties prior to the
expiry of the previous period of protection during the last six
months ending on the last day of the month in which the cessation
of protection occurs.
The design rights validity renewal may be submitted
following the expiry of the time period referred to in paragraph 2 of
the present Article, provided that the double amount of the required
administrative fees and duties is paid.
The new industrial design protection period shall commence
on the day of expiry of the previous five year period.
The industrial design protection renewal shall be entered into
the Register and shall be published in the Official Gazette.
The regulations issued by the Ministry shall prescribe in more
detail the content of the request referred to in paragraph 2 of the
present Article and the documentation submitted together with the
request.
Cessation of Protection
Article 40
The industrial design right shall cease:
1) With the expiry of the protection time period referred to in
paragraph 39 of the present Law;
2) If the right holder abandons the right in writing, on the day
of filing the statement of abandonment;
3) Based on a court decision, or a decision of a competent
authority, on the day indicated in such decision;
4) If the legal person has been dissolved, or if the natural
person who is the holder of right has died, on the day of dissolution
of the legal person or death of natural person, unless the design right
has been transferred to legal successors of such persons.
If the right in favor of a third person has been entered in the
Industrial Design Register (license, pledge or similar right), the
industrial design rights holder may not renounce the right without
written consent of the person whose name has been entered in the
Register.
Should the holder of the industrial design right fail to pay the
administrative fees and duties charged for the maintenance of the
validity of the registered industrial design within the prescribed time
period, and the license, lien, or any other right in favor of a third
person has been entered in the Industrial Design Register, the
competent authority shall notify such person that administrative fees
and duties have not been paid and that he/she may make due
payment within six months following the beginning of the year for
which administrative fees and duties are due and thus maintain
validity of the entered right.
VII. INTERNATIONAL REGISTRATION OF INDUSTRIAL
DESIGNS
International Registration Procedure
Article 41
The international industrial design registration shall be done
in accordance with the Hague Agreement.
The application for international industrial design registration
shall be filed directly to the International Bureau of the World
Intellectual Property Organization (hereinafter referred to as: the
International Bureau).
The prescribed international industrial design registration fees
shall be payable directly to the International Bureau.
The provisions of the present Law, excluding Article 34
thereof, shall be applicable to the requests seeking expansion of
effectiveness of the international registration to the territory of
Montenegro, pursuant to Article 8 of the Hague Act of the Hague
Agreement and Article 12 of the Geneva Act of the Hague
Agreement.
VIII. UNREGISTERED INDUSTRIAL DESIGN
Novelty and Duration of Protection of Unregistered Designs
Article 42
An industrial design which has not been registered with the
competent authority (hereinafter referred to as: the Unregistered
Design) shall be considered new if an identical industrial design was
not made available to the public prior to the date when the
unregistered industrial design was made available to the public.
The protection right for an unregistered industrial design shall
last for three years from the date when the design was made
available to the public in Montenegro for the first time.
An unregistered design shall be deemed to have been made
available to the public, if it has been published, exhibited or used in
trade in goods or otherwise disclosed in the course of regular
business activities to the groups specialized in the given sector in
Montenegro.
The industrial design shall not be deemed to have been made
available to the public if it has been disclosed to a third person
under conditions of confidentiality related to the industrial design.
Provisions of Articles 6, 10 and 11 of the present Law shall
be applicable to unregistered industrial designs.
IX. CIVIL LAW PROTECTION
Declaration of Invalidity of the Industrial Design Registration
Article 43
Any legal or natural person shall be entitled to file a lawsuit
with a competent authority aimed at declaring the industrial design
registration invalid either in whole or in part, in the course of
duration of the right.
The lawsuit referred to in paragraph 1 of the present Article
may be filed where a design has been registered contrary to the
provisions of Article 11 paragraph 1 items 1, 2 and 3 of the present
Law.
The court shall be obliged to submit to the competent
authority the final judgment declaring the industrial design
registration invalid either in whole or in part.
Contending the Industrial Design Right
Article 44
A designer or his/her legal successor shall be entitled to file a
lawsuit with the court seeking declaration that he/she is the holder
of the industrial design registered to the defendant’s name contrary
to the provisions of Article 12 of the present Law, or that the he/she
is the industrial design holder together with the person to whom the
industrial design has been registered.
Following the receipt of the final court decision, the
competent authority shall enter the plaintiff into the Register at
his/her request as a holder of the industrial design.
Lawsuit for Acknowledging Authorship
Article 45
By filing a lawsuit with the court, the person who considers
himself/herself as being the author of the industrial design or his/her
legal successor, may seek the declaration that he/she is the author of
the industrial design registered to the defendant’s name contrary to
the provisions of Article 13 of the present Law, and that he/she be
entered into all documents and the Register as the author of the
design.
The plaintiff referred to in paragraph 1 of the present Article
may request that the judgment be published at the expense of the
defendant, seek compensation for moral and material damage as
well as payment of costs and expenses of the court proceedings.
The period for filing the lawsuit referred to in paragraph 1 of
the present Article shall not have a time limit.
Lawsuit in Case of Industrial Design Rights Infringement
Article 46
Industrial design rights infringement shall be considered to be any
unauthorized use of a registered industrial design by any party to
trade, within the meaning of Article 15 of the present Law.
In case of infringement of industrial design rights, the design
rights holder may request from the competent court to determine the
industrial design rights infringement.
In the lawsuit referred to paragraph 2 of the present Article,
the plaintiff shall be entitled to request:
1) Cessation of the industrial design rights infringement;
2) That the items used in infringement of the right be
destroyed or modified;
3) That the tools and equipment used for production of the
articles used in infringement of the right be destroyed or modified;
4) Compensation for material injury and reimbursement of
costs and expenses associated with court proceedings;
5) Publication of the verdict at the expense of the defendant;
6) That the information on any third persons participating in
infringement of rights be revealed.
A person infringing industrial design rights shall be held
liable for the injury pursuant to the general rules on compensation of
damages.
When determining on the lawsuit referred to in paragraph 3
items 2 and 3 of the present Article, the court shall examine all the
circumstances of the case, in particular the proportionality between
the severity of the infringement and damage caused.
The proceedings on the referred to in paragraph 2 of the
present Article shall be administered in an expedited manner.
The lawsuit for infringement of the industrial design rights
may be filed within three years following the day the plaintiff has
become aware of the infringement and the infringer, but not later
than within five years following the day when infringement was
committed for the first time.
Provisional Measures
Article 47
At the request of the person who makes it likely that his/her
industrial design rights or the rights arising from the application
have been infringed, or that such infringement is imminent, the
court may order a provisional measure of seizure or withdrawal
from circulation of the articles used in infringement and means for
production of such articles, or the measure prohibiting continuation
of any activities by way of which the infringement may be
committed.
Provisional measures referred to in paragraph 1 of the present
Article and the securing of evidence referred to in Article 48 of the
present Law, may be requested prior to the filing of a lawsuit
against the infringement of a protected industrial design or of the
rights arising from the application, provided the lawsuit has been
filed within a time period of fifteen days from the date of execution
of the request for pronouncing a provisional measure and/or the
request for securing of evidence.
An appeal against the court decision pronouncing the
provisional measure referred to in paragraph 1 of the present Article
shall not delay the enforcement of the decision.
Securing of Evidence
Article 48
At the request of the person who makes it likely that his/her
industrial design rights or rights arising from the application have
been infringed, or that there is a reasonable suspicion that evidence
thereof will be destroyed or that it will not be possible to obtain
such evidence later on, the court may order a measure to secure
evidence without giving prior notice to or hearing the person from
which evidence is to be collected.
For the purposes of paragraph 1 of the present Article, the
securing of evidence shall mean the inspection of premises,
vehicles, books, documents, as well as the seizure of infringing
goods, questioning of witnesses and expert-witnesses.
The court order for an interim measure to secure evidence
shall be served on the person from which evidence is to be
collected, on the occasion of the collection of evidence, and to an
absent person, as soon as that becomes possible.
Collateral Security
Article 49
At the request of a person against whom the proceedings for
infringement of the industrial design right or proceedings for
imposing a provisional measure have been initiated, the court may
determine an appropriate amount of money, to be borne by the
applicant, as a security in the event that request is found to be
groundless.
Duty to Provide Information
Article 50
The court may order the infringer of the protected industrial
design or the witness to furnish information about third parties who
have taken part in infringement of the right and about their
distribution channels, provided there are no reasons to withhold
witness statements pursuant to provisions of the law governing civil
proceedings.
The person who fails to perform its duty referred to in
paragraph 1 of the present Article shall be liable for the damage thus
incurred.
X. REPRESENTATION
Requirements for a Representative
Article 51
An industrial design representative may be:
1) A natural person with Montenegrin citizenship residing in
Montenegro, having university degree and having successfully
passed the industrial design representative exam before a competent
authority;
2) Law office or a lawyer entered into the Montenegro Bar
Association Register unless otherwise provided by ratified
international treaties;
3) Legal person with its legal seat in Montenegro employing
at least one employee meeting the criteria referred to in paragraph 1
of the present Article or having cooperation with such person based
on other type of contractual relationship and providing registration
services before competent authorities as its registered business
activity.
Register of Representatives
Article 52
Competent authority shall maintain the Register of Industrial
Design Representatives.
Persons meeting the requirements referred to in Article 51 of
the present Law shall be entered into the Register of Industrial
Design Representatives.
Entry into the Register of Industrial Design Representatives
shall be subject to the payment of the prescribed administrative fees
and duties.
The industrial design representative exam referred to in
Article 51 paragraph 1 item 1 of the present Law shall be taken
before a panel of experts of the competent authority.
The curriculum and the manner of taking the industrial design
representative exam, the panel composition, examination fee and
content of the Register of Industrial Design Representatives shall be
determined by the Ministry.
Removing a Representative from the Register of Industrial
Design Representatives
Article 53
A representative shall be removed from the Register of
Industrial Design Representatives:
1) At his/her own request;
2) If a final court judgment has been passed prohibiting
him/her from performing representation activities;
3) If he/she has been convicted to a prison sentence exceeding
six months, of which he/she must duly notify the competent
authority.
XI. TRANSITIONAL AND FINAL PROVISIONS
Initiated Procedures
Article 54
Procedures initiated prior to the effectiveness of the present
Law shall be finalized in keeping with the present Law, if this is
more favorable to the party.
The Industrial Design Register established prior to the
effectiveness of this Law shall be harmonized with the present Law
within a time period of six months from the date of effectiveness of
the present Law.
Industrial Design Application Register established prior to the
effectiveness of the present Law shall become a record of
applications and shall be harmonized with this Law, within a time
period of six months from the date of effectiveness of the present
Law.
Recognized Rights
Article 55
Industrial designs registered and entered into the Industrial
Design Register with the Serbia and Montenegro Intellectual
Property Institute (herein after referred to as: Serbia and
Montenegro Institute), and/or Serbia Intellectual Property Institute
(herein after referred to as: Serbia Institute) until 28 May 2008, shall
be valid in Montenegro without requiring the payment of the fee
until the expiry of their validity, and/or until the expiry of the time
period for which the Serbia Institute has been paid the rights
maintenance fee, if their holders have submitted the application for
entry into the Register within the time period of one year from the
effectiveness date of the present Law.
Industrial designs for which the competent authority has
issued the industrial design validity certificate in a form of a note
affixed to the copy of the certificate issued by Serbia and
Montenegro Institute or Serbia Institute, the competent authority
shall enter such designs into the Register without requiring that a
separate request be filed, within a time period of one year from the
effectiveness date of the present Law.
The competent authority shall issue the rights validity
certificate for industrial designs for which rights validity
applications have been filed and it shall enter those industrial
designs into the Register within a time period of one year from the
effectiveness date of the present Law.
Industrial design validity renewal applications, assignment
applications and applications for the change of name and address for
industrial designs referred to in paragraph 1 of the present Article
shall be deemed as applications for the entry into the Register.
Industrial design rights referred to in paragraph 1 of the
present Article shall be established on the basis of design
documentation and/or certificate issued by the Serbia Institute.
By-laws
Article 56
By-laws for the enforcement of the present Law shall be
adopted within six months from the date of the present Law taking
effect.
Until the adoption of the by-laws referred to in paragraph 1 of
the present Article, the provisions of the by-laws adopted on the
basis of the Law on the Legal Protection of Designs („Official
Gazette of Serbia and Montenegro”, No. 61/04) shall be applicable,
unless they are contrary to the provisions of the present Law.
Cessation of the Application of the Law
Article 57
The Law on the Legal Protection of Designs („Official
Gazette of Serbia and Montenegro” No. 61/04) shall cease to be
applicable as of the date of the present Law taking effect.
Entry into force
Article 58
This Law shall enter into force on the eighth day from the
date of its publication in the “Official Gazette of the Montenegro”.
SU-SK No. 01-692/7
Podgorica
22 December 2010
PARLIAMENT OF MONTENEGRO
IN ITS 24 TH
CONVOCATION
SPEAKER OF THE PARLIAMENT
Ranko Krivokapić