When starting a business, one of the first steps is choosing a business name for your company or sole proprietorship. This is important, if only for formal reasons. You can register a company name with the Serbian Business Registers Agency (SBRA) only if that name is available or sufficiently different from existing ones.
At one of the next stages, you register an appropriate domain name, create a logo and website, and start developing your business.
Over time, as the business grows, its name becomes recognizable. It appears on products, offers, invoices, social media and advertisements. Clients recognize you by that name and recommend you to others.
However, the fact that you have registered a company under a particular name — or even the fact that you have successfully operated under that name for years and use the corresponding internet domain — does not automatically mean that you have protected that name as a trademark.
A business name, an internet domain name and a trademark may be identical or very similar, but from a legal perspective they are not the same and do not provide the same type of protection.
What Is a Business Name?
Every company conducts business and participates in legal transactions under a business name registered in accordance with the law.
A company’s business name must contain its name, legal form and the place where its registered office is located, with the name itself being the distinctive part of the business name that distinguishes one company from another.
The Serbian Companies Act therefore imposes certain restrictions on the choice of company names. Among other things, a company name may not be identical to the name of another company and must differ sufficiently so as not to create confusion regarding identity.
Similar rules apply to sole proprietors where their registered business name includes a specific name.
This is why it makes perfect sense to check the SBRA register before establishing a company to determine whether the name you want is available for registration.
But this is precisely where a misconception arises that may cause complications in the future. The fact that a business name is available under the SBRA’s registration rules does not automatically mean:
- that you can use that name without risk as a designation for your products or services; or
- that by registering the business name you have acquired trademark rights.
Here is an illustrative example.
You could most likely register your company as Cipiripi DOO Leskovac if there are no other companies registered under that or a sufficiently similar name. If you manufacture sweaters or school supplies, you will probably encounter no problems. However, if you decide to manufacture confectionery products, it is very likely that you will receive, at best, a polite but certainly serious letter demanding that you immediately cease production and the placing of products on the market under that name.
On the other hand, suppose you have built a highly recognizable name in the marketing industry and registered your company under that name with the SBRA. Another company operating in a similar field could still begin offering services under your name. Its registered business name with the SBRA would certainly be different, but it could use your name on advertising materials, offers, letterheads and elsewhere, potentially creating confusion in the market and causing damage to your business. The extent of that damage — and the legal options available to you — may depend on whether or not you have protected your name.
In other words, the SBRA registers the business names of business entities under the rules governing the registration of business entities. A trademark, on the other hand, is a separate intellectual property right and is subject to a different set of rules.
What Is a Trademark?
A trademark is a right that protects a sign used in the course of trade to distinguish the goods or services of one natural or legal person from those of another.
A trademark may consist of a word, name, logo, combination of words and graphic elements, as well as other types of signs that meet the legal requirements for protection.
Trademark protection is linked to specific goods and services.
When filing an application for trademark registration, it is necessary to specify the goods and services for which protection is sought, i.e. the relevant classes under the international classification system. Therefore, rather than simply asking whether someone is registered with the SBRA under a similar name, it is more important to determine whether goods or services similar to yours are already being marketed under that name.
Even the question “Is this name protected?” is not sufficient on its own. The broader context must be considered: which sign is involved, for which goods or services it is used or protection is sought, whether an earlier identical or similar sign exists, and whether the similarity between the signs and the relevant goods or services could create a likelihood of confusion among the relevant public.
For this reason, two companies may, under certain circumstances, use identical or similar signs in different areas of business, while in other situations even signs that are not completely identical may come into conflict.
An Available Domain Does Not Mean the Brand Name Is Available
A similar misconception exists when it comes to registering an internet domain name.
Suppose you have found the perfect name, checked the availability of the domain and discovered that, for example, the corresponding .rs domain is available. You register it and build your website.
Keep in mind that doing so does not give you trademark rights to that name.
Registering a domain gives you the right to use a specific internet address, but it does not constitute trademark registration. More importantly, the fact that a particular domain name was available does not mean that no one else has earlier rights to the same or a similar sign.
Situations in which a company properly registers a domain name, starts using it and only later discovers that an earlier trademark exists with which its name conflicts are more common than you might think.
In other words, three separate questions need to be considered:
- Can I register my company under this business name?
- Is the desired internet domain available?
- Are there any earlier rights that could prevent me from using and protecting this sign as a trademark for my products or services?
An Established Brand – An Unprotected Name
We see this very often:
Founders come up with a name that suits their business. A search of the SBRA shows that they can register a company under that name. The corresponding domain is available. They register the company and the domain, hire a designer to create their visual identity, build a website, open social media profiles and start investing in marketing.
After several years in business, they have become a recognizable name in their industry. Their name appears on packaging, promotional materials, vehicles, storefronts or business premises. The company has invested significant resources in building an association between that name and its products or services in the minds of consumers.
Only then does the company decide to protect the name as a trademark.
A search reveals that an earlier identical or similar sign has already been protected for the territory of Serbia in relation to identical or similar goods or services. Suddenly, what seemed like a routine administrative task — registering a trademark — turns into a legal and business problem.
Among other things, the Serbian Trademark Law provides that a sign cannot be protected if it is identical to an earlier protected sign for the same type of goods or services. A problem may also arise where the signs are not identical: if a sign is similar to an earlier protected sign and relates to identical or similar goods or services, it will be necessary to assess whether there is a likelihood of confusion among the public.
Depending on the circumstances of the particular case, a company may therefore find itself in a situation where it cannot simply register as its own trademark a sign it has been using for a long time, or where its continued use of that sign raises the issue of infringement of an earlier right.
What can be done in such a situation?
Changing the name means much more than creating a new visual identity and registering a new domain. It may require changes to the website, packaging, advertising materials and social media profiles, as well as notifying clients and business partners. It also means losing some of the recognition that has been built over the years. The more established the brand, the higher the potential cost of such a change.
Who Used the Sign First?
Priority is extremely important in this area. The time at which an application is filed is recorded down to the minute, making it easier to determine which right has priority.
However, determining whose right is stronger is still not always straightforward.
For example, the Serbian Trademark Law provides for a limitation under which a trademark holder may not prohibit another person from placing their goods or services on the market under the same or a similar sign if that sign constitutes their business name or designation and was acquired in good faith before the recognized priority date of the trademark.
This, however, is not a good reason to postpone protecting a brand. Quite the opposite. When rights to a name are addressed only after a conflict has arisen, it becomes necessary to establish dates, the manner and extent of use, the types of goods and services involved, earlier rights and other circumstances of the particular case.
It is much simpler to consider these issues before a dispute arises.
What Should You Check Before You Start Investing Heavily in a Name?
Checking the desired name in the SBRA register is certainly one of the first steps when establishing a business. The SBRA itself provides a search facility for registered names, and it is also possible to reserve a name before registration.
However, if the name will also be used as a brand under which the market will recognize the company’s products or services, the search should not end there. It is also necessary to check whether any earlier trademarks exist that could represent an obstacle.
The Intellectual Property Office of the Republic of Serbia provides a database for searching national trademarks, while internationally registered trademarks may also be relevant where protection extends to the territory of the Republic of Serbia.
Simply entering a name into a database and concluding that everything is fine because no completely identical result appears is not sufficient. When assessing a potential conflict, the similarity between signs may also be relevant, as may the similarity between the goods and services to which they relate.
If a company plans to operate outside Serbia, the issue becomes even broader: trademark protection is territorial, so the markets in which the company intends to operate should be taken into account when developing its protection strategy.
For this reason, the best time to conduct these checks is actually before making a significant investment in a brand.
Conclusion
A business name and a brand do not have the same significance for every company. Some companies operate under one registered business name while offering their products or services on the market under entirely different signs. A single company may also have several different brands.
For other businesses, on the other hand, the company name itself represents their most important commercial sign.
The decision on protection should therefore be based on one key question:
Which signs have enough commercial and economic value for our business that we want to ensure they receive appropriate legal protection?
If a reputation is being built under a particular name, if customers recognize products or services by that name, if significant amounts of money are being invested in promoting it, and if the name is intended for long-term use, then protecting it is no longer merely a formal legal issue.
It becomes a matter of protecting a business asset.