Manufacturing in Serbia: protect your trademark before the contract manufacturer does
Hundreds of German, Austrian, Italian and Swiss companies have products made in Serbia: clothing, footwear, furniture, cables, automotive parts. The manufacturing agreement gets attention, the trademark almost never. In Serbia your EU or national mark has no effect, and the manufacturer printing your logo on the labels can register it in its own name. Here is how to prevent that, in order.
Author: Srđan Bogićević, attorney at law, founder · Law checked:
What a contract manufacturer can do without your registration
Serbia is a first-to-file country: the mark belongs to whoever files first, unless bad faith is proven in court. A manufacturer or former distributor holding your sign can ask customs to stop your shipments, prevent a new supplier from using the mark, and ask money for an assignment.
The typical case: the cooperation ends, the manufacturer keeps producing under your brand for other customers, and you discover that the Serbian mark is theirs. At that point your options are an opposition, only within three months of publication, or a cancellation action for bad faith, which takes years.
Before the agreement: file in Serbia
Filing with the Serbian Intellectual Property Office is quick and inexpensive: 21,390 dinars for an application covering up to three classes, 25 percent less electronically, and 42,740 dinars for registration and the first ten years. If you hold an EU, German, Austrian or Swiss mark, you can instead designate Serbia in a Madrid international registration.
File the word mark and, if you use a logo, the logo as well. Choose the classes of the goods the manufacturer makes (for example 25 for clothing, 18 for bags, 20 for furniture, 9 for cables, 7 or 12 for components) and, if you also sell in Serbia, class 35 for retail.
In the manufacturing agreement
The agreement with the Serbian manufacturer should state expressly that the marks and designs remain yours, that the manufacturer may not file identical or similar signs in any country, that use of the mark is allowed only for your production and ends with the agreement, and that labels, moulds and production overruns are destroyed or returned. Add a contractual penalty and a jurisdiction clause.
If the manufacturer is to use the mark towards third parties, for example to sell in Serbia, grant a written licence and record it in the Serbian register: use under a recorded licence counts as your use and protects the mark from cancellation for non-use.
After registration: customs and monitoring
A mark registered in Serbia can be recorded with Serbian Customs, which detains suspect goods at the border, including overruns leaving without your consent. We also watch new applications and oppose similar signs.
If the Serbian plant serves markets outside the EU, for example Switzerland, the UK, Turkey or the Gulf, check that the mark is registered there too: the goods leave from Serbia and a customs stop only works where the mark exists.
Frequently asked questions
The manufacturer has already registered our mark in Serbia. What now?
If publication is recent, oppose within three months. Otherwise a cancellation action for bad faith before the court, with evidence of the business relationship, or a negotiated assignment. Meanwhile file the mark in every other country where you produce or sell.
Is a clause in the manufacturing agreement enough?
No. The clause gives you a contractual claim against the manufacturer, but it does not prevent a filing and does not bind third parties. Only a registration in Serbia blocks someone else's filing and goods at customs.
How long does registration in Serbia take?
Usually about a year, but protection runs from the filing date and the filing itself blocks later applications. That is why it pays to file before signing the manufacturing agreement.
This guide provides general information and is not legal advice for your specific case. Send us your question for an assessment.
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