Trademark Practice and Forms Treatise Chapter - Kosovo

Prepared by:
Kujtesa Nezaj-Shehu, SDP KOSOVË

OVERVIEW: The Basics

COUNTRY FACTS:

Location

Kosovo is located in Southeast Europe, bordering Macedonia to the southeast, Albania to the southwest, Serbia to the north, and Montenegro to the west.

Major Cities

Prishtina (capital), Peja, Prizren, Mitrovica.

Government

Parliamentary democracy with a unicameral parliament.

Legal System

Civil Law

Currency

Euro

Est. GDP

GDP EUR 3.792 billion (2009 est.) GDP per capita – EUR 1,731 (2009 est.)

Economic Sectors

Agriculture: 12.9%
Industry: 22.6%
Services: 64.5% (2010 est.)

International IP Agreements

None

Applicable Classification

Nice Classification – 9th edition

Home Registration

Not required

Right to Trademark

First to file

Duration of protection

10 years as of the filing date

Renewal Period

10 years from the date the latest registration expires

Registration Priority

Paris Convention priority available
Exhibition Priority available

OVERVIEW: POLICIES AND TRENDS

Trade and Regulatory Climate

Although Kosovo is quite often considered as the poorest country in Europe, it does offer a decent investment environment. With the purpose of enabling a smooth transition from the previous economic and legal system, over the past 11 years, the United Nations Interim Administration Mission in Kosovo (UNMIK) and the Kosovo Government have implemented a number of economic, legal and institutional reforms. The Kosovo Government has also undertaken several obligations with the aim of enabling free movement of goods and services. In this regard, Kosovo benefits from the Central European Free Trade Agreement (CEFTA), the EU Autonomous Trade Preference Regime (EU Council Resolution 2007/200), as well as from customs-free access to the US market.

Though Kosovo is considered to be an import-based country, a number of industrial and business sectors are very well developed in this country. The most important industrial sectors include agriculture, wood processing, information technology and telecommunications, construction, mining and energy, and textile. According to the Investment Promotion Agency of Kosovo (IPAK) statistics, foreign direct investments (FDI) have been on the increase in the last years, totaling approximately 440 million EUR in 2007.

Being one of the newest jurisdictions, the IP legislation is, in general, very new. The first IP-related law was enacted only in 2004. Though the IP legislation has been drafted by a number of international experts, there was a need to have new laws that would be in full compliance with the acquis communitare. As a result, a number of IP laws are currently being drafted and adopted and are expected to enter into force in 2011.

Why Register Locally?

Registration is important because, unless a trademark is commonly and generally known in trade due to continuous use of the mark or it is a well-known trademark as provided by Article 6bis of the Paris Convention, the owner of an unregistered trademark would not be able to enforce his or her rights. Further, the certificate of registration is a prima facie evidence of validity in all legal proceedings.

The Future

The Kosovo Government has supported a number of IP-related laws, with the purpose of harmonizing the laws with the EU legislation. Several crucial changes are being introduced with these laws, which are expected to enter into force during 2011.

OVERVIEW: Laws, Rules, Regulations

Law on Trademarks (Law No. 2/L-54) that entered into force pursuant to UNMIK Regulation 2006/38 on June 28, 2006;
Administrative Instruction No. 2007/13 dated September 17, 2007 on the Registration Procedure of Trademarks, which entered into force on the same date;
Administrative Instruction No. 2009/19 dated September 23, 2009 on Official Fees for Registration of Objects of Industrial Property, which entered into force on the same date;
Law on Customs Measures for Protection of Intellectual Property Rights (Law No. 03/L-170) that entered into force on January 8, 2010;
Administrative Instruction No. 07/2010 for implementation of the Law No. 03/L-170 on Customs Measures For Protection of Intellectual Property Rights, which entered into force on July 30, 2010.

REGISTRATION REQUIREMENTS

What is a mark?

Any sign that is:

Capable of distinguishing the goods or services of one undertaking from those of another undertaking;
Non-functional; and
Capable of being represented graphically

can be protected as a trademark.

The law further lists signs that can be protected as trademarks provided the above conditions are met, such as words, personal names, designs, letters, numerals, audio marks, three-dimensional configurations, packaging, colors, and combination of colors.

Which marks may be registered?

Trademark for Goods

Any mark capable of distinguishing the goods of one undertaking from those of another undertaking.

Trademark for Services

Any mark capable of distinguishing the services of one undertaking from those of another undertaking.

Associated Trademark

There are no provisions with respect to associated trademarks.

Collective Trademark

A collective mark distinguishes the goods or services of the members of an association that is the proprietor of that mark from those of other undertakings. An applicant for registration of a collective trademark must file the terms governing the use of the mark, which should specify the persons or undertakings authorized to use the mark, the membership conditions of the association, and the conditions of use of the mark.

A collective trademark will not acquire registration if:

There is a substantial likelihood that the public will be misled as to the character or significance of the mark, and
The applicant fails to submit the terms governing the use of the mark as prescribed by the Law.

Certification Trademark

A certification mark implies that the goods or services in connection with which the mark is used are certified by the proprietor of the mark with respect to their origin, material, mode of manufacture of the goods or performance of the services, quality, accuracy, or other characteristics. Same as for the collective trademarks, an applicant wishing to acquire registration of a certification mark must file with the IP Office the terms governing the use of the mark, which should include the persons or undertakings authorized to use the mark, the characteristics to be certified by the mark, how the certifying body will test these characteristics and supervise the use of the mark, any fees to be paid in connection with the operation of the mark, and the procedures for resolving disputes.

Colored Trademark

Provided a color trademark meets the above-identified requirements, it can acquire registration with the IP Office.

Series of Trademarks

The Law on Trademarks does not exclude the possibility of filing a series of trademarks. Article 42 of the Law grants the discretionary right to the IP Office to provide supplementary registration provisions regarding the registration of a series of trademarks in one registration. The IP Office has adopted no such provisions so far.

What Cannot be Registered?

A trademark cannot be registered in the territory of Kosovo if the following circumstances exist:

Non-distinctive Trademarks

Marks, which are devoid of any distinctive character, are not registrable in Kosovo.

Descriptive Trademarks

Marks that consist exclusively of signs or elements that may serve in trade to indicate the kind, quality, quantity, purpose, value, geographical origin, time of production of the goods or of the performance of the services, or any other characteristics of the goods or services cannot acquire registration with the Kosovo IP Office.

Generic Marks

A mark that consists exclusively of signs or indications that have become common in the current language or in established practices of the trade cannot be registered as a trademark.

Deceptive Trademarks

A trademark will not acquire registration if there is a likelihood that it will deceive the public as to the nature, quality or geographical origin of the goods or services.

Marks with Unauthorized Content

A trademark will not be registered if it includes identical or similar elements to:

The armorial bearings, flag or other emblem of a state;
The armorial bearings, flag or other official emblem of Kosovo, of a municipality, association of communities, or association of other communal entities existing within Kosovo;
An official sign, emblem or other hallmark indicating control or warranty of a public authority or public enterprise;
The armorial bearings, flag or other sign, seal or designation of an international intergovernmental organization.

Marks That Are Immoral, Unlawful or Contrary to the Public Order

Marks that are against the moral and public order, or the use of which is contrary to other legal provisions in Kosovo, cannot obtain registration.

Confusingly Similar Marks

A trademark shall not be registered if:

It is identical with an earlier filed or registered trademark and the goods or services for which the registration is sought are identical with the goods or services covered by such earlier filed or registered trademark;
Because of its identity with or similarity to an earlier filed or registered trademark and the identity or similarity of the goods or services covered by both trademarks, there exists a likelihood of confusion on the part of the public;
The trademark is identical with or similar to an earlier filed or registered trademark and the registration is sought for goods or services that are not similar to those covered by the earlier filed or registered trademark, but the latter has acquired reputation in Kosovo and use of the trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier filed or registered trademark;
It is identical with or similar to an earlier right, such as:
A right to a trademark that became commonly and generally known because of continuous use of the same on the market;
A right to a commercial designation within the meaning of Article 5 of the Law on Trademarks;
A right established by the Law on Copyright or the Law on Industrial Designs, or any other laws relating to rights to a name, personal portrayal, plant varieties, geographical indication, or other industrial property rights.

The proprietor of an earlier well-known trademark as defined by Article 6bis of the Paris Convention, whether registered or not registered, may also oppose an application or revoke a registration under three situations:

If the mark is identical with an earlier well-known trademark and the goods or services for which the registration is sought are identical with the goods or services covered by such earlier well-known trademark;
If, because of its identity with or similarity to an earlier well-known trademark and the identity or similarity of the goods or services covered by both trademarks, there exists a likelihood of confusion on the part of the public;
If the trademark is identical with or similar to an earlier well-known trademark, and the registration is sought for goods or services that are not similar to those covered by the earlier well-known trademark, but the latter has acquired reputation in Kosovo and the use of the trademark without due cause would take unfair advantage or, be detrimental to, the distinctive character or reputation of the earlier well-known trademark.

Exceptions to the Above

Apart from marks that are immoral, unlawful or contrary to the public order, all of the above are registrable if certain conditions are met. For instance:

Non-distinctive, descriptive and generic trademarks may acquire registration if such trademarks have acquired secondary meaning, and therefore have become distinctive of the applicant’s goods or services in trade;
A mark with unauthorized content shall obtain registration if the applicant is duly authorized to incorporate such signs to a particular trademark, even if there is a likelihood of confusion;
Confusingly similar marks will obtain registration if the applicant submits the consent of the owner of the earlier trademark.

Who Can Register?

Proprietor or User

Any natural or legal person may be the proprietor of a trademark application or trademark registration with the Kosovo IP Office.

Authorized Agent

To register their rights with the Kosovo IP Office, a foreign natural person or international legal entities not having permanent address in Kosovo must use the services of a licensed trademark and patent agent. A signed and sealed Power of Attorney would be necessary in these cases. Trademarks applied for or registered without the proper authorization of the proprietor of the trademark will be refused or canceled. The list of authorized patent and trademark agents can be downloaded here.

Priority Registrant

Any natural person or legal entity having a regular national filing in a Convention country has a right to priority if the same application has been filed with the Kosovo IP Office within a period of six months from the date of filing of the first national application. Under these circumstances, a copy of the first application issued by the corresponding IPO has to be filed with the Kosovo IP Office within the prescribed legal deadline.

TRADEMARK REGISTER

Where is the Trademark Registered?

Trademark Register

The Industrial Property Office established within the Ministry of Trade and Industry is the specialized institution responsible to administer the procedure for registration of patents, trademarks, industrial designs, geographical indications and integrated topographic circuits. With respect to trademarks, the IP Office maintains three different registers: the register of applications for registration of marks, the register of registered trademarks, and the register of patent and trademark agents. The information contained in these registers is public. In case of trademark applications, there is a need to file an official request and pay the prescribed official fee if the interested party wants to obtain information. If a trademark is already registered, there is no need to file an official request. The necessary information can be obtained from the Official Bulletin, which is published by the Kosovo IP office and can be downloaded here.

Requirement of Distinctiveness

A trademark will not be registered if it is not distinctive, that is, a trademark registration will be refused if the trademark does not distinguish its goods and services from the goods and services of the competitors. Apart from the “inherent distinctiveness” requirement, a trademark shall also acquire registration if it has acquired distinctiveness before the date of filing of the application for registration and following the use of the mark.

Exclusive Use Rights

The proprietor of a registered trademark has the exclusive right to, inter alia, use the trademark in relation to the goods or services covered by the registration. As a result, the proprietor is entitled to prevent third parties from using the trademark if the following circumstances exist:

A sign that is identical to a registered trademark for identical goods/services is used in the course of trade;
A sign that is substantially similar to a registered trademark for similar goods/services is used in the course of trade, and because of this, there is a likelihood of confusion among the public, including the likelihood of confusing the sign with the registered trademark; or
A sign that is identical or similar to a registered trademark is used in the course of trade for goods that are neither identical nor similar to those of the registered trademark, where the registered trademark has acquired reputation in Kosovo and such use would constitute unfair advantage, or be detrimental to, the distinctive character or reputation of the mark.

In a trademark infringement case, the first most important criterion that must be established is that the infringer used the trademark in the course of trade. In other words, the infringer used the mark for the purpose of distinguishing his or her manufactured goods or services performed from the goods and services of others. Once it is concluded that the infringing sign is being used in the course of trade, the court must then decide if there is a “double identity” case, a “confusingly similar” case, or a “dilution” case.

According to Article 14.4 of the Law on Trademarks, the following may constitute use of a registered trademark:

Affixing the sign to the goods or to the packaging thereof;
Offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
Importing or exporting the goods under the sign;
Using the sign on business papers and in advertising.

There is a discrepancy in the Law with respect to exclusive use rights of the owner of a well-known trademark in Kosovo. At one point, the Law on Trademarks, more particularly Article 4(c) of the same, does provide that all protections provided by the Law shall apply to, inter alia, a sign that has become well-known within the meaning of Article 6bis of the Paris Convention. Accordingly, the proprietor of a well-known trademark would also be entitled to the above-indicated exclusive use rights. On the other hand, provisions specific to well-known trademarks do not really entitle the proprietor of a well-known trademark with the right to prevent third parties from using a trademark if the goods or services are different from those covered by the well-known trademark. Therefore, it is yet to be determined to what extent will the proprietors of well-known trademarks be entitled to the exclusive use rights.

Limitation on Exclusive Use Rights

A trademark registration shall not entitle the proprietor to prohibit third parties from using:

His or her own name or address;
Indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or performance of the service, or other characteristics of the goods or services;
A trademark where it is necessary to indicate the intended purpose of a product or service, in particular, accessories or spare parts, provided the third party uses them in accordance with honest practices in industrial or commercial matters;
A trademark for the purpose of identifying its goods and/or services;
An earlier unregistered right within the area where it has been previously used.

Apart from the above, the proprietor of an earlier trademark right shall not have the right to require cancelation or prohibit the use of a later trademark, if the proprietor has knowingly acquiesced to the use of a registered trademark in Kosovo for a continuous period of five years. However, if the later trademark is applied in bad faith, the proprietor would still be entitled to require cancellation or prohibit the use of such trademark.

The proprietor of a trademark shall neither have the right to prohibit the use of a trademark in relation to goods that have been put on the market in Kosovo or in the European Union under that trademark by the proprietor or with his or her consent, unless there exist legitimate reasons for the proprietor to oppose further commercialization of the goods.

Validity

A trademark registration will be valid in the territory of the Republic of Kosovo for a period of ten years counting from the filing date. Registered trademarks may be renewed for further periods of ten years provided the renewal request is filed timely with the Kosovo IP Office and the administrative fee is paid. Provided an additional fee is paid, late renewal is possible within 6 months from the date of expiration. Once the renewal is requested, the trademark registration will be valid for another ten years starting from the date of expiration. Renewal for a limited list of goods and/or services is also possible.

A trademark registration will be invalidated if it is found in breach of absolute or relative grounds of refusal. The invalidation request may be filed either before the competent court or with the Kosovo IP Office.

The validity of a trademark registration will also cease if a revocation declaration has been filed either before the competent court or with the Kosovo IP Office. The declaration to revoke a particular trademark registration may be filed under the following grounds:

The trademark has not been genuinely used in Kosovo within an uninterrupted period of five years from the date the registration was published in the Official Bulletin, and there is no justification for non use;
The trademark has become an ordinary word in the market for the goods or services for which the trademark is registered;
The trademark is likely to mislead the public, particularly with respect to the nature, quality, or the geographical origin of such goods or services, as a consequence of the use by the owner itself, or with his or her consent.

The invalidation or revocation of a particular registered trademark will be published in the Official Bulletin of the IP Office.

Enforcement

Enforcement of trademarks is possible either before the competent court or before the Kosovo Customs. The infringing goods, particularly counterfeits, are mostly imported from other countries. Therefore, filing a Customs Watch Application with the Kosovo Customs is definitely the most recommended action. The Law on Customs is in line with the EU Directive, as it provides a fast-track procedure for destruction of the detained goods, thus making the investment of the time and money put into enforcement worth for the client. Actions before courts may take quite a while. This is because of two reasons: the re-organization of the judicial system is currently underway and there is lack of expertise among judges. Thus, a number of cases are settled through alternative dispute resolution processes, such as negotiation.

In a trademark infringement action, the plaintiff is entitled to demand from the court all kinds of remedies that are available to the proprietors of other types of property rights, particularly to order the infringer:

To cease using the infringing mark;
To refrain from further acts that would infringe the rights of the holder of the trademark;
To remove the infringing signs, or if this is not possible, to destroy the infringing goods;
To remove the infringing goods from the channels of commerce;
To destroy the infringing goods.

INITIAL REGISTRATION

Procedural Timeline

Search and Advice

Availability search is not compulsory before filing a trademark application with the Kosovo IPO. It is advisable to perform a search though. The search will provide information on the published and unpublished trademark applications and registrations. Because the IPO does not have a sophisticated database, it is not possible to perform a figurative trademark search. Word mark availability search is the only option, although it takes a while to obtain search results from the IPO.

Application

The Application for the Registration of a Trademark should be filed directly with the Archive Office at the Ministry of Trade and Industry. The application must contain information about the applicant, the trademark name, the identification of the goods and services covered by the application, and the declaration on use or intention to use the mark in Kosovo. The application is signed by the applicant or by its authorized representative. An application is filed only with respect to a single trademark.

Along with the application for trademark registration, the applicant should also submit:

A description of the list of goods or services, translated into the official language;
If the sign is figurative – an additional example showing the depiction of the sign;
If priority is claimed – the copy of the first application and its translation thereof;
If its a collective trademark application – the contract on collective trademark rights;
A Power of Attorney, if the trademark application is filed through an authorized representative; and
Evidence of the payment of the official fee.

Provided an official fee is paid, documents such as Powers of Attorney and/or Priority Documents may be filed subsequently with the Kosovo IP Office.

Formal Examination

Once the application is filed, the IP Office performs a formal examination of the trademark application. If the application contains deficiencies, the IPO issues an office action to the applicant asking the latter to remedy the deficiencies. The deadline to respond to the IPO’s office action is two months from the date of receipt of the office action. If the right holder or the representative fails to properly respond, the trademark application will be deemed withdrawn.

The IP Office will grant a trademark application and issue the Filing Certificate only if the formal requirements are met and/or remedied within the prescribed deadline, and the registration is not barred by absolute grounds for refusal.

Publication of trademark application

If an application meets the registration requirements, the IPO will publish the same in the Official Bulletin. The publication fee is included in the initial application fee. Thus, no additional official fee is required to be paid.

The following information is published in the Official Bulletin:

Trademark application number;
Trademark application date;
Name and address of the applicant;
Name and address of the representative;
List of products and services covered by the application;
Priority date, if any;
Representation of the mark;
Colors claimed, if any.

Oppositions

An opposition can be filed with the Kosovo IP Office within three months of the date of publication of the trademark application in the Official Bulletin. The following categories may initiate an opposition procedure on relative grounds for refusal:

The proprietor of a registered trademark having an earlier filing date;
The proprietor of an earlier pending trademark application;
The proprietor of an earlier, whether registered or unregistered, well-known trademark;
The proprietor of an earlier unregistered mark that is commonly and generally known in the trade because of continuous use of the mark;
The proprietor of a right to a commercial designation;
The proprietor of an earlier right established by the Law on Copyright or the Law on Industrial Designs, or any other laws relating to rights to a name, personal portrayal, plant varieties, geographical indication, or other industrial property rights;
The proprietor of a trademark whose trademark has been filed without its authorization.

According to Article 12 of the Law on Trademarks, the proprietor of an earlier International Registration or CTM application can also file an opposition with the Kosovo IPO. It is our opinion, however, that these provisions are not applicable until Kosovo accedes to the Madrid Agreement and/or Protocol and becomes a member of the European Union.

An opposition will be accepted and the IPO will not grant registration if a trademark:

Is identical to an earlier filed or registered trademark and the goods or services for which the registration is sought are identical to the goods or services covered by such earlier filed or registered trademark;
Because of its identity with or similarity to an earlier filed or registered trademark and the identity or similarity of the goods or services covered by both trademarks, there exists a likelihood of confusion on the part of the public;
The trademark is identical with or similar to an earlier filed or registered trademark, and the registration is sought for goods or services that are not similar to those covered by the earlier filed or registered trademark, but the latter has acquired reputation in Kosovo and the use of the trademark without due cause would take unfair advantage or, be detrimental to, the distinctive character or reputation of the earlier filed or registered trademark;
It is identical with or similar to an earlier right such as:
1. A right to a trademark that is commonly and generally known in the trade because of continuous use of the mark;
2. A right to a commercial designation;
3. A right established by the Law on Copyright or the Law on Industrial Designs, or any other laws relating to rights to a name, personal portrayal, plant varieties, geographical indication, or other industrial property rights.

Situations 1 through 3 above also apply to earlier well-known trademarks as defined by Article 6bis of the Paris Convention, whether registered or not registered.

The Notice of Opposition should include the following information:

Details of the application being opposed, such as the application number, the applicant details, and the list of goods and services;
Details of the proprietor of the earlier trademark;
Legal basis for filing an opposition;
Evidence confirming the existence of an earlier right;
Evidence on payment of the official fee.

Registration

If no opposition is filed or the same is successfully overcome, the IP office will grant the registration and invite the applicant to pay the registration fee. The registration fee will include fees for the ten-year maintenance and the publication fee. The certificate of registration is issued upon payment of a separate additional official fee. The registration will be published in the Official Bulletin, which will include the following information:

Trademark registration number;
Trademark registration date;
Trademark application number;
Trademark application date;
Details on the proprietor of the trademark;
Details on the authorized representative;
List of goods and/or services;
Priority data, if claimed;
Trademark representation;
Colors claimed, if any;
Information on the type of trademark – individual, collective or certification trademark; and
The next renewal due date.

Government Fee Schedule

Official fees for:

Searches: 20 EUR

Application:

One class of goods and/or services: 40 EUR
Each additional class in excess of three: 5 EUR

Registration:

One class of goods and/or services: 40 EUR
Each additional class in excess of three: 10 EUR
Issuance of certificate of registration: 10

Renewal:

One class of goods and/or services: 80 EUR
Each additional class in excess of three: 5 EUR

See Administrative Instruction No. 2009/19 on Official Fees for Registration of Objects of Industrial Property.

REGISTRATION FORMS

Information Checklist

The Applicant

If a natural person – the first and the family name, full address and the state of permanent residence;
If a legal entity – full name of the entity and full address (street, postal code, city and the country).

The Mark

Type of mark – individual, collective or certification mark;
Type of mark – word mark, figurative or three dimensional mark;
Graphical representation of the mark;
Transliteration – if the mark is filed in letters different from the Latin alphabet;
Description of the mark;
Translation of the mark;
Colors claimed;
Indication of use or intention to use the mark;
Indication of goods and services covered by the trademark application;
Priority information, if claimed.

Agents and Service

Full name of the authorized representative;
Full address of the authorized representative (street, postal code, city and the country);
Telephone, fax and e-mail.

Attachments to Form

Description of the goods and services covered by the application;
The Power of Attorney;
Priority Document, if claimed;
Representation of the mark on a separate sheet, if figurative or 3D;
Proof of payment of the official fee.

Registration Forms

Power of Attorney Form

There is no specified Power of Attorney form. The authorized representatives may use either general Power of Attorney forms or limited ones. The PoA must contain the full name and address of the applicant, the full name and address of the authorized representative, the full name and the position of the person signing the authorization, the stamp or seal of the company, and the place and date of execution. No notarization or legalization or any other formalities are required.

Application for Registration of Trademark

The Application for Registration of a Trademark must be filled and completed in one of the official languages of Kosovo.

The application form can be downloaded here.

Notice of Opposition

There is no prescribed Notice of Opposition.

Request to Amend a Trademark Application or Registration

There is no prescribed form. When requesting amendment of a trademark application or registration, however, the following details must be included:

Application/registration number;
Proprietor’s details;
Representative’s details;
Type of amendment – assignment, license, owner’s name change, owner’s address change, limitation of lists of goods and services;
Evidence supporting the requested amendment i.e. owner’s name and address change;
Proof of payment of the official fee.

Notice of Withdrawal of an Application, Notice or Request

There is no specific form.

Payment of Trademark Registration Fee

There is no specific form.

POST REGISTRATION

Renewal of Registration

Duration of Protection

A trademark will be valid for ten years as of the filing date of the application for trademark registration. The registration can be renewed for further periods of ten years.

Renewal Before Expiration

There is no prescribed period within which a request for renewal of a trademark should be submitted. In practice, however, renewal requests are usually submitted within the last six months of protection.

Renewal After Expiration

Provided an additional late fee is paid, a renewal request can be filed within a period of six months as of the expiration of a trademark registration.

Reinstatement

The Law on Trademarks does not provide anything with respect to reinstatement of rights if the proprietor fails to timely renew the trademark registration.

Advertisement of Renewal

If properly and timely filed, the IP office will issue a Renewal Certificate to the applicant, and the same will be entered in the Trademark Register and published in the Official Bulletin.

Alteration or Modification

Correction of technical mistakes

If a mistake is made by the IP Office, the same will be corrected either ex officio or upon notification by the proprietor of the trademark. No official fee will be charged in this case. However, in case there is a typo made by the representative or proprietor of the trademark, a request for correction of the technical mistake along with proof of payment of the official fee should be filed with the Kosovo IP office.

Alteration to Trademark

A registered trademark can be altered if such alteration does not affect the identity of the trademark. If the IP Office considers that the requested alteration does affect the identity of the trademark, it will decide not to alter the Trademark Register. If it decides the contrary, the IP Office will publish the altered trademark in the Official Bulletin, upon which there will be a three-month deadline to file an opposition.

Alteration to Goods and/or Services

The proprietor of a trademark registration can request limitation of the list of goods and services either through a separate form or when a renewal request is filed. Extending the scope of list of goods and services is not possible.

Alteration to Name or Address

The holder of a trademark application or registration can request recordal of change of the name or address. Evidence showing the requested changes and proof of payment of the respective official fee must be filed along with the request for recordal of changes.

Cancellation of Registration

The procedure for cancellation of a registration may be initiated either by the proprietor of the registration, the IP Office, or a third party. The Notice of Cancellation may be filed before the IP office or before the competent court. Regardless of who initiates the cancellation, if granted, the proprietor will cease enjoying the right to use the mark or give consent to use the mark, and will not be able to use any of the prescribed legal remedies if the subject trademark is infringed.

Revocation of Trademark Registration for Non-Use

A trademark registration may be revoked if the proprietor has not genuinely used the mark in Kosovo within five years of the date the registration was published in the Official Bulletin. The court will revoke a trademark registration if there is no proper reason for non-use during an uninterrupted period of five years.

Genuine use of a trademark includes:

Use that differs in form but does not alter the distinctive character of the trademark;
Affixing the trademark to goods in Kosovo solely for export purposes; or
If the use is resumed or commenced after a five-year period, but three months before a Notice for Revocation is filed.

A trademark registration shall also be revoked if it has become an ordinary word in relation to the goods and services for which it was registered, or there is a likelihood that the trademark registration will mislead consumers with respect to the kind, quality, or the geographical origin of the goods and/or services for which it is registered.

Partial revocation is possible. Under such circumstances, the revocation, if granted, will occur only with respect to those goods and/or services covered by the revocation notice.

The proprietor’s rights shall be deemed to have ceased from the date the Notice of Revocation is filed with the Kosovo IP Office or the court, or from an earlier date, if the IP Office or the court decide that grounds for revocation existed since then. The decision on revocation will be recorded in the Trademark Register and the same will be published in the Official Bulletin.

Invalidation of trademark registration

A trademark registration will be declared invalid upon the request of the IP office or a third party if found to have been registered in breach of absolute or relative grounds for refusal. Provided the exceptions to absolute and relative grounds are not existent, the IP office or the competent court will declare the trademark registration invalid, that is, as if it has never been filed.

Assignments

A trademark can be assigned provided the assignment is in writing and signed by, or on behalf of, the proprietor of the registered trademark. The proprietor of the trademark may decide to assign the trademark either partially or in whole. Partial assignment refers to cases such as if the proprietor assigns the right to some of the goods or services for which the trademark is registered or if it subjects the use of the trademark to a particular manner of use or to a particular territory.

Recordal of the assignment with the IP Office is not compulsory. It is, however, recommended to record the assignment, as otherwise it will be ineffective against third parties. To proceed with recordal of an assignment, the proprietor or the representative must submit a request for recordal of an assignment, the original assignment deed or a notarized copy thereof, and proof of payment of the official fee. Pending trademark applications may be subject to assignment as well.

Licenses

The proprietor of a trademark can license the use of the mark provided there is a license made in writing and the same is signed by the licensor or on its behalf. A license may be general or limited, or exclusive.

A limited license exists if it:

Is concluded in relation to some goods and services for which the trademark is registered;
Is subject to a particular manner of use of the mark; or
Is subject to use in a particular territory.

An exclusive license may be either general or limited, and the issuance thereof will exclude all others from use of the trademark, including the licensor.

The proprietor of a trademark may initiate legal proceedings against the licensee if the licensee uses the mark:

In breach of the terms of the license;
In a manner not specified by the license;
In relation to goods and/or services not covered by the license;
In a territory not covered by the license;
For manufacture of goods or performance of services of a lower quality than those covered by the license.

Recordal of a license with the IP Office is not compulsory. It is, however, recommended to record the license, as otherwise it will not have any legal effects against third parties. To proceed with recordal of a license, the proprietor or the representative must submit a request for recordal of a license, the original license agreement or a notarized copy thereof, and proof of payment of the official fee.

To bring a trademark infringement lawsuit, the licensee will need to have the proprietor’s consent. The licensee shall not be entitled to claim damages in a trademark infringement case if a request for recordal of the license is not filed with the IP office within a period of six months of the date the license agreement was concluded. The six-month period will not apply if the court decides that it was not possible to record the license in due time, but the same has been recorded as soon as the impeding circumstances ceased to exist.

RESOURCES

Government Offices

Industrial Property Office
Ministry of Trade and Industry
Muharrem Fejza str. n.n., Lagja e Spitalit,
10000 Prishtine, Republic of Kosovo
Tel: +381 38 200 36554

Kosovo Customs
IPR Unit
Tel./Fax: +381 38 221 993

Investment Promotion Agency of Kosovo
Ministry of Trade and Industry
Muharrem Fejza str. n.n., Lagja e Spitalit,
10000 Prishtine, Republic of Kosovo
Phone: +381 38 200 36 542
Fax: +381 38 212 807
E-mail

Laws

Law on Trademarks (Law No. 2/L-54) that entered into force pursuant to UNMIK Regulation 2006/38 on June 28, 2006

Administrative Instruction No. 2007/13 dated September 17, 2007 On the Registration Procedure of Trademarks, which entered into force on the same date

Administrative Instruction No. 2009/19 dated September 23, 2009 On the Official Fees, which entered into force on the same date

Law on Patents No. 2004/49 dated September 27, 2004 as amended by Law On Amendments and Additions to Patent Law No. 02/L-100 dated December 18, 2006

Administrative Instruction No. 2007/6 dated March 19, 2007 On the Organization and Operation of the Industrial Property Office

Law on Customs Measures For Protection of Intellectual Property Rights (Law No. 03/L-170) that entered into force January 8, 2010

Administrative Instruction No. 07/2010 for implementation of the Law No. 03/L-170 On Customs Measures For Protection of Intellectual Property Rights which entered into force on July 30, 2010

Article Files

Application-Form-Kosovo-Albanian.pdf (1.09 MB)