Overview
Agreements that hold up in the region
We draft, review and register IP agreements across all six Western Balkan jurisdictions — covering licences, assignments, co-existence agreements and franchise arrangements. We also handle recordal of these transactions before the relevant IP offices, which is a necessary step for the transaction to produce legal effect against third parties in all six jurisdictions.
Types of agreement
Licence
The most common transaction in the region. Licences may be exclusive or non-exclusive, granted by class, by territory or across the full portfolio. A typical structure involves a rights holder granting a licence to a local distributor covering one or more of the six jurisdictions. The most frequent issues are failure to register the licence, absence of a quality control clause, and imprecise territorial scope.
Co-existence agreement
Particularly relevant in this region given the number of historically similar marks that arose from the break-up of Yugoslavia. Co-existence agreements define who may use what, in which territory, for which goods. Enforceability depends on both parties maintaining valid registrations in all relevant jurisdictions.
Assignment
Less frequent, but encountered in acquisitions, restructurings and portfolio centralisation. In all six jurisdictions, an unregistered assignment does not produce effect against third parties. Bosnia and Herzegovina additionally requires notarisation of signatures on the assignment agreement - a requirement that is routinely overlooked when standard form agreements are sent from abroad.
Franchise
Formally regulated in some jurisdictions, subject to general contract law in others. A properly structured arrangement combines the trademark licence with know-how provisions and quality requirements.
Recordal
Registration before the IP offices
We handle recordal of licences, assignments and pledges before all six IP offices. In all six jurisdictions, a licence or assignment that has not been recorded does not produce effect against third parties. We treat recordal as a standard step in every licensing or M&A transaction where the region is in scope.
Common issues
Where regional agreements fail
Form - all jurisdictions require written form for licences and assignments; Bosnia and Herzegovina additionally requires notarisation of signatures for assignments
Registration - an unrecorded licence or assignment does not bind third parties in any of the six jurisdictions, regardless of how well the underlying agreement is drafted
Exhaustion - regimes differ:
Serbia applies international exhaustion;
Albania and Montenegro apply regional exhaustion based on the EU model;
North Macedonia applies national exhaustion; this directly affects parallel import clauses in licence agreements
Power of attorney - some agreements provide for representation before the IP office without a valid power of attorney, or with one that expires before the agreement does
Specification - licences granted for the mark generally, without specifying classes and goods, create uncertainty if the registration is later narrowed or partially invalidated
Practical notes
Unrecorded licences and third-party protection
In most jurisdictions in the region, an unrecorded licence does not produce effect against third parties - regardless of whether the agreement is validly signed and in force between the parties. This means that in the event of the licensor's insolvency, enforcement proceedings or a transfer of the mark to a new owner, a licensee who has not recorded the licence has no protection. This is frequently not anticipated by practitioners accustomed to systems where recordal is optional rather than a condition of third-party protection.