Serbia has a well-structured trademark licensing framework under the Trademarks Law. For foreign law firms advising clients with Serbian operations or market exposure, the rules are mostly predictable, but a few points consistently catch practitioners off guard. This post covers what matters in practice..

The written form requirement is mandatory

A trademark license agreement must be in written form. The agreement must contain the date of conclusion, full identification of both parties, the registration number of the trademark (or the application number), the duration of the license, and the scope of the license. An unwritten license, regardless of what the parties intended or how the relationship has operated in practice, has no legal effect.

Notarization is not required for the license agreement itself. This is a meaningful distinction from some neighboring jurisdictions, notably Albania, which requires a notarized copy for registration. In Serbia, the written instrument alone is sufficient.

Registration is not mandatory, but unregistered licenses have no third-party effect

Registration of the license in the Trademark Register is optional in the sense that the agreement is valid between the parties without it. However, the Trademarks Law states clearly that an unregistered license produces no legal effect against third parties. In practice, this means:

  • A subsequent transferee of the trademark takes free of the license if it was not registered at the time of transfer.
  • A licensee relying on an unregistered license cannot assert rights against an infringer in its own name.
  • Priority between competing licensees is determined by registration date, not agreement date.

The practical advice is straightforward: always register. The procedure is handled before the Intellectual Property Office (ZIS) and is not burdensome.

Exclusive versus non-exclusive licenses

The Law distinguishes between exclusive and non-exclusive licenses, and the distinction matters for enforcement standing. An exclusive licensee who has formally notified the trademark owner of an infringement may bring an infringement action in its own name if the owner fails to act within 30 days of receiving that notice. A non-exclusive license requires the trademark owner's consent to sue.

Either type of licensee may, for the purpose of recovering its own damages, join proceedings initiated by the trademark owner.

Multiple co-owners: unanimous consent required

Where a trademark is co-owned, the Trademarks Law requires the consent of all co-owners for a license to be granted, unless the co-ownership agreement provides otherwise. This is worth flagging early in transactions involving jointly held marks, particularly where co-owners are in different jurisdictions and obtaining coordinated consent may not be straightforward.

Collective marks and certification marks cannot be licensed

The Trademarks Law contains an express prohibition: collective marks and certification marks (guarantee marks) are not capable of being the subject of a license agreement. The same restriction applies to pledges. If your client's brand strategy involves a certification scheme, the Serbian framework does not permit licensing that mark to third parties in the ordinary sense. The rights framework operates differently for these mark types.

Breach of license conditions: the owner’s remedies

The Trademarks Law gives the trademark owner, as licensor, standing to invoke trademark rights against a licensee who acts outside the terms of the license. The specific conditions covered are the duration of the license, the form of use permitted under the registration, the scope of goods or services, the territory, and the quality of goods produced or services rendered. This provision functions as a statutory backstop that operates regardless of what the license agreement itself says about termination and breach.

Pledges and enforcement against the mark

A trademark may be pledged as security. The pledge must be in written form and must be registered in the Trademark Register to be effective against third parties. If your client is financing a transaction in which a Serbian trademark forms part of the collateral package, registration of the pledge is not optional. A creditor acquires the pledge right only upon registration.

Transfers: a different regime from licenses

License agreements and transfer agreements are governed by separate provisions of the Law. Transfers also require written form, and the Law contains an additional substantive restriction: a transfer that would create a likelihood of confusion as to the origin, type, quality or geographical origin of the goods or services will not be registered, unless the acquirer disclaims protection for the goods or services in respect of which confusion could arise. This is a point that occasionally requires attention in multi-brand transactions.

Practical checklist for foreign counsel

  • Confirm the trademark is registered in Serbia. Madrid Protocol designations have effect in Serbia, but the use period for enforcement purposes runs from a specific date under the Law.
  • Ensure the license agreement is in written form and contains all mandatory elements required by the Trademarks Law.
  • Register the license at ZIS. Unregistered licenses have no third-party effect.
  • Identify whether the mark is a collective or certification mark at the outset. Those cannot be licensed.
  • If exclusive, confirm the 30-day notice mechanism is correctly drafted to preserve the licensee's right to bring independent infringement proceedings.
  • In co-ownership situations, obtain written consent from all co-owners before execution.
  • If the mark forms part of a security package, register the pledge separately.

IP Adria handles trademark prosecution and portfolio management across Serbia and the wider Western Balkans region. If you have questions about a specific licensing structure or need local counsel for registration or enforcement, we are available to assist.