Likelihood of Confusion in Serbia Under Article 6: Relative Grounds and Dominant Elements

Relative grounds are often the most commercially consequential obstacle to registration in Serbia. A mark may be perfectly distinctive and unobjectionable on public policy grounds, yet still be refused or opposed because it conflicts with an earlier sign. Serbian law addresses this through Article 6 of the Law on Trademarks 2020, which is built around identity, similarity, and likelihood of confusion, including association. For businesses, the practical stakes are high: a relative-ground issue can derail launch plans, force a rebrand, trigger opposition costs, or narrow the usable scope of a mark in Serbia. A sound filing strategy therefore requires a disciplined comparison of the signs, the goods and services, and the distinctiveness of the earlier right.

The Legal Framework: Article 6 and Article 7 of the Law on Trademarks 2020

• Article 6(1): A trademark shall not be protected if it is identical to an earlier trademark registered for identical goods or services.
• Article 6(2): A trademark shall not be protected if, because of identity or similarity to an earlier trademark and identity or similarity of goods or services, there is a likelihood of confusion on the part of the public, including likelihood of association with the earlier mark.
• Article 6(3): Protection extends to well-known marks under the standards reflected in Paris Convention Article 6bis.
• Article 6(4): The law also protects earlier marks more broadly where statutory conditions for expanded protection are met.
• Article 7: Special relative grounds may be raised by opposition, including conflict with an earlier registered company name or its essential part in relation to related goods or services.
• Article 34: Creates the three-month opposition period after publication and gives the applicant 60 days to reply after notification.

The Likelihood of Confusion Test Under Article 6

The Serbian test is a global assessment of whether the relevant public is likely to be confused as to commercial origin. Article 6(2) expressly confirms that confusion includes the likelihood of association. This does not require proof of actual confusion in the market. The question is predictive and comparative: would the average relevant consumer in Serbia, when confronted with the later mark on the claimed goods or services, believe that the goods or services come from the same undertaking as those sold under the earlier mark, or from economically linked undertakings?

The analysis is multifactorial. The main components are:

• Similarity of the marks: visual, phonetic, and conceptual similarity are all relevant.
• Similarity of goods and services: identity increases risk, but complementary or commercially related goods can also suffice.
• Distinctive character of the earlier mark: stronger earlier marks usually enjoy a broader scope of protection.
• Relevant public: the attention level of the average consumer or trade purchaser matters.
• Overall impression: the marks are compared as a whole, but the dominant and distinctive elements usually receive more weight.

This global assessment means there is no rigid checklist. A higher degree of mark similarity may offset a lower degree of goods similarity, and vice versa. But the statutory core remains simple: there must be sufficient similarity on both the sign side and the goods or services side to create likely confusion.

What the Intellectual Property Office of the Republic of Serbia Considers in Relative-Ground Analysis

The Intellectual Property Office of the Republic of Serbia applies an analysis broadly aligned with European comparative practice, though the decision will always turn on the Serbian filing, the cited earlier right, and the relevant public.

Visual similarity

Visual comparison examines the appearance of the signs. For word marks, this includes length, letter sequence, structure, common prefixes or suffixes, and script presentation. Minor differences may not prevent similarity where the overall appearance remains close. For figurative marks, the examiner considers composition, shapes, layout, and prominent graphical features.

Phonetic similarity

Phonetic comparison matters greatly for consumer ordering, recommendations, and word-of-mouth purchasing. The Office considers how Serbian consumers are likely to pronounce the marks. This is important where foreign-language words are involved. Two marks may differ visually but still sound similar in Serbian pronunciation. Conversely, unusual spellings may have limited significance if consumers vocalize them in the same way.

Conceptual similarity

Conceptual similarity addresses meaning. If two marks convey the same idea, image, or semantic content, that can increase confusion risk, especially where visual or phonetic similarity is also present. Translation can matter. A word in one language and its Serbian equivalent may be conceptually similar. The same applies where a figurative sign strongly depicts the concept expressed by a word mark.

Goods and services similarity

Serbia uses the Nice Classification, but class numbers are not decisive by themselves. The Office evaluates the actual nature of the goods or services, their purpose, users, trade channels, complementarity, and market expectations. Identical goods create the highest risk. Goods in different classes may still be similar if consumers expect them to come from the same source. Services and goods can also be related if they are commercially linked.

Dominant element comparison in combined marks

Combined marks require special care. The Office compares the overall signs, but it often gives greater weight to the element that consumers are most likely to remember and use. In many consumer sectors, the verbal element dominates because buyers refer to products by name. However, this is not absolute. A highly distinctive device element may dominate where the wording is weak, descriptive, or visually subordinate.

This has practical consequences:

• Combined mark versus word mark: If the combined mark contains the same or a highly similar distinctive word, the added logo may not avoid confusion.
• Combined mark versus combined mark: The comparison often centers on the distinctive words first, with figurative elements used to confirm or reduce the overall similarity.
• Word mark versus logo mark: If the logo contains no word and presents a different overall concept, conflict risk may be lower, though conceptually similar imagery can still matter.

Multilingual issues are relevant here too. Serbian consumers may recognize common English words and other familiar foreign terms. The Office can therefore compare conceptual meaning across languages and scripts. Latin and Cyrillic variants of the same verbal element may also increase similarity.

Key Case Law

No leading cases have been published in the source guide for Serbia on likelihood of confusion under Article 6 or on dominant element comparison in combined marks. The reliable guidance is therefore the statutory text of Article 6 and Article 7, together with the established examination methodology described in the source guide.

The Procedure for Responding to a Relative-Ground Objection or Opposition

Step 1: Verify the earlier right

Check whether the cited earlier mark or company name is valid, relevant to the claimed goods or services, and owned by the party relying on it. A weak or improperly characterized earlier right can significantly change the analysis.

Step 2: Compare the signs systematically

The response should address visual, phonetic, and conceptual similarity separately, while also emphasizing the overall impression. If the marks share only weak or descriptive matter, that point should be made clearly.

Step 3: Compare the goods and services precisely

Applicants often improve their position by showing that the cited goods or services differ in nature, users, distribution channels, or commercial function. Narrowing the specification may also help.

Step 4: Address the distinctive strength of the earlier mark

If the earlier mark contains descriptive or customary matter, the applicant should argue that its scope of protection is narrower. Similarity resting only on weak shared elements should not automatically lead to confusion.

Step 5: Analyze the dominant element in combined marks

If the later mark includes a strong device element or the shared wording is non-distinctive, the response should explain why consumers will not rely primarily on the overlapping matter.

Step 6: Consider practical resolution

Depending on the commercial context, the applicant may seek a coexistence arrangement, letter of consent, or a limitation of goods and services. This is often more efficient than full adversarial prosecution, particularly in opposition proceedings under Article 34.

Step 7: File the reply within the statutory period

After opposition notification, the applicant has 60 days to respond under Article 34. Missing the deadline can lead to avoidable refusal.

Strategic Recommendations

• Recommendation: Conduct a relative-rights search before filing, including earlier trademarks and relevant company names under Article 7.
• Recommendation: Assess not just exact matches but also phonetic and conceptual proximity, especially where foreign-language terms or transliterations are involved.
• Recommendation: Draft the goods and services list carefully. Limiting the specification at the outset can significantly reduce conflict exposure.
• Recommendation: For combined marks, assume the verbal element will often receive substantial weight unless it is clearly weak and visually subordinate.
• Recommendation: If the earlier mark is weak, build the response around the narrow scope of protection that weak marks should receive.
• Recommendation: Use publication monitoring to anticipate oppositions and prepare settlement options before the three-month window expires.

Common Mistakes

• Mistake: Looking only for identical marks and ignoring near-homophones, translations, and conceptually similar signs.
• Mistake: Assuming different Nice classes guarantee safety. Goods and services can still be commercially similar across classes.
• Mistake: Believing that a logo always cures a word conflict. If the shared word is dominant and distinctive, the logo may not matter enough.
• Mistake: Ignoring company names as a source of opposition risk under Article 7.
• Mistake: Failing to respond within the 60-day period after opposition notification under Article 34.

Key takeaway: Under Article 6, Serbian relative-ground analysis turns on a global assessment of mark similarity, goods similarity, and the overall impression of the signs, with particular attention to dominant and distinctive elements. Businesses that search broadly, draft narrowly, and analyze verbal and figurative components realistically will be better positioned to avoid refusals and defend oppositions.