The issue of intellectual property rights protection has not been a priority for the government of the Republic of Kosovo until very recently.
Intellectual Property Rights in Kosovo
Before 2004, all intellectual property rights were protected through the Federal Intellectual Property Office in Belgrade, Serbia. Although Kosovo was placed under the United Nations Interim Administration Mission in Kosovo (UNMIK) in June 1999, from the intellectual property standpoint, Kosovo was still subject to Serbian IP laws until 2004 when the first IP related laws were passed by the Kosovo Assembly. Even after establishing its own Industrial Property Office (IPO) in 2007, Kosovo is not yet a member of any international organizations such as World Intellectual Property Organization (WIPO) or World Trade Organization (WTO) nor a signatory state to any of the IP-related international treaties such as the Paris Convention or the Berne Convention.
The enactment of the first Law on Patents in 2004 was followed by the adoption of the Law on Industrial Designs, the Law on Trademarks, the Law on Copyright and Related Rights, the Law on Protection of Plant Varieties, the Law on Customs Measures, the Law on Determining the Rights and Protection of Topographies of Integrated Circuits, and the Law on Prevention and Fight of the Cyber Crime, all of which were adopted by 2010. Even though these laws were drafted with the assistance of international experts, and therefore expected to be in line with the European Union legislation, amendments were needed soon after their adoption.
In September 2011, the Law on Trademarks, the Law on Industrial Designs, and the Law on Patents, were enacted and aim to bring the Kosovo IP legislation in line with the EU directives and the minimum standards endorsed by the TRIPS Agreement. This article explores whether these laws have achieved this goal.
Recent Legislative Developments
The 2011 Laws not only aim to bring Kosovo’s IP legislation in line with the EU legislation, but also attempt to address a number of questions raised during the enforcement of the previous laws, be it formal or substantive related.
The Law on Trademarks
Unlike the previous trademark law, which was largely influenced by U.S. law, the 2011 Law on Trademarks is based on European law. The new law abolishes a number of requirements included in the previous law during the drafting of which United States legal experts played a crucial role.
In general, in civil law countries, i.e. most countries in Europe, trademark rights are acquired through registration. The applicant who is the first to file the request for registration with the competent authority is deemed to have acquired the ownership rights of that trademark in contrast to trademark rights acquired through use, as is the case in the United States and other common law jurisdictions.
Similarly to the U.S. approach, the former trademark law in Kosovo granted trademark rights to companies even if they did not register the trademarks. The owner of an unregistered trademark acquired protection and was able to enforce his rights if he showed that, because of the continuous use of the trademark in Kosovo, the trademark was commonly and generally known in trade. However, unlike the trademarks acquired in the US through the “actual use” of the mark, this provision of the former Kosovo law imposed the “continuous use” requirement, which might be interpreted to be dissimilar to the “use” in the United States, but was never interpreted by the Kosovo courts. When interpreted together with a number of other provisions, however, one may conclude that such “continuous use” was drafted with the intention to resemble the “actual use” as defined by the Lanham Act. The new law on trademarks, however, is unambiguous and concise in this regard, clearly stating that trademark rights are acquired through registration only.
Adopting a clear civil law system of acquiring trademark rights is, in my opinion, the best solution for Kosovo. The courts in Kosovo, like in other civil law countries, are used to ruling on property-dispute cases on the basis of written evidence. Thus, unless one has a certificate of registration as an evidence of ownership, inexperienced courts in Kosovo will encounter difficulties determining who acquired the trademark rights first. Such difficulties had already been encountered by other enforcement institutions such as the Customs and the Market Inspectorate, which were reluctant to take any action if the right holder did not possess the certificate of registration.
Furthermore, the 2011 Law on Trademarks abolishes the U.S.-influenced requirement of declaring the use or intention to use the mark when filing a trademark application with the Kosovo IPO. Generally, in civil law countries, trademark rights must be maintained through actual trademark use. However, there is no obligation to start using the mark before acquiring such rights through registration. The former trademark law was quite ambiguous in this respect since it asked for use declaration on the application, but it did not consider the “use” requirement a condition for acquiring trademark rights through registration. Non-use was not considered an absolute ground for refusal, as it is the case in the U.S. As a result, it was very difficult to ascertain the meaning behind this requirement, to declare the use or the intention to use when filing the application, if the trademark owner will not be asked to start using the mark, and the registration will be issued regardless of the use. By abolishing this requirement, the new law makes it clear that no use will be required before the trademark owner obtains registration.
One of the most significant provisions of the 2011 law is the possibility to request an accelerated examination of a trademark application. Up to now, the IPO examined trademark applications in the order they were received. However, the law does not specify the conditions which need to be satisfied before the IPO will grant the accelerated procedure. The procedure, the conditions and the official fees will be outlined in the Administrative Instruction which is to be approved in the near future by the Ministry of Trade and Industry.
Another provision introduced by the new law is the so-called “continuation of proceedings.” The holder of a trademark application or registration can apply for the continuation of proceedings if the applicant or the trademark holder has lost certain rights granted by the trademark application or the trademark because they failed to take a certain action within the prescribed deadline. The IPO will allow the continuation of proceedings only if the application is filed within 60 days from the time the applicant or the holder ought to have acted, and the prescribed official fee has been duly settled.
The Law on Patents
The 2011 Law on Patents introduces important new provisions as well as some changes to existing ones. For the first time in Kosovo, the new patent law introduces the possibility for an invention belonging to a citizen of the Republic of Kosovo to be kept secret for such period of time as the national interest requires. In addition, the new patent law, also for the first time, includes provisions on compulsory licenses for pharmaceutical products for export to countries with public health problems and supplementary protection certificates for pharmaceutical and plant products, as requested by the corresponding EC Regulation. The court now has jurisdiction to decide a compulsory licensing request. However, these new provisions will not enter into force until Kosovo joins the EU.
The 2011 patent law also introduces the possibility to restore priority rights provided: (1) the request is filed within two months following the expiration of the 12-month priority period, but before the completion of the technical preparations for the publication of the patent application; (2) proof is provided that the applicant failed to meet the deadline despite the exercise of due care; and (3) prescribed official fees are paid.
The Law on Industrial Designs
The 2011 Law on Industrial Designs introduces an important change concerning the industrial design registration procedure. According to the new law, the Kosovo IPO will only perform a formal examination in order to determine whether the object is genuinely a design as defined by the law and whether it contradicts the public rules. There is no substantive examination. As a result, the IPO will not determine the novelty of industrial designs or the individual character of an industrial design. The new law also excludes the possibility for a legal person to be considered as the designer as was possible under the former law. The designer can only be a natural person.
The recent legislative changes also introduced the right to appeal the IPO’s decisions within 15 days of the receipt of the decision. The 2011 laws require that the Ministry of Trade and Industry, under which the IP office operates, establish a Commission which will have the authority to review the appeals. The Commission’s decision will then be subject to review by the judicial authority. There is a 30-day deadline to file a lawsuit against the Commission’s decision before the competent court. Prior to the enactment of the 2011 laws, the general rules of the Law on Administrative Procedure applied.
Less Protection for Well-Known Trademarks
Despite these positive changes, the 2011 laws, particularly the Law on Trademarks, are missing a number of important provisions and are therefore not yet in full compliance with the TRIPS Agreement and the EU Directive.
The 2011 trademark law lacks a number of provisions regarding the protection of unregistered well-known trademarks. According to the former law, a trademark would not be registered, or it would be cancelled if it was in conflict with a well-known trademark, whether registered or not, under the following circumstances: (1) if the trademark was identical with an earlier trademark, and the goods or services for which the registration is sought were identical with the goods or services covered by the well-known trademark; or (2) if, because of its identity with or similarity to a well known trademark, and the identity or similarity of the goods or services covered by both trademarks, existed a likelihood of confusion on the part of the public; or (3) if the mark was identical with or similar to a well-known trademark, but the registration was sought for goods or services that were not similar to those covered by the well-known trademark, and the mark had acquired reputation in Kosovo and such use would constitute unfair advantage, or be detrimental to, the distinctive character or reputation of the mark.
Essentially, the former trademark law provided the trademark holders with the possibility to protect unregistered well-known trademarks under the same conditions as registered well-known trademarks with respect to both identical or similar goods or services as well as for dissimilar goods or services. Thus, the former law was in full compliance with Art. 6bis of the Paris Convention, Art. 16(2) of the TRIPS Agreement as well as Art. 4(2)(d) of the EU Directive. Moreover, the former law went beyond Art. 16(3) of the TRIPS Agreement and Arts. 4(3) and 4(4)(a) of the EU Directive by enabling the protection of unregistered reputed trademarks through opposition or cancellation actions, even for different goods or services.
Regarding the right to prohibit a third party from using the mark, under the former law, owners of unregistered well-known trademarks had the possibility to prevent the use of a trademark in relation to identical or similar goods or services in Kosovo by injunction, where the use was likely to cause confusion. Holders of unregistered reputed trademarks did not have the same possibility in cases where the mark was used for different goods or services. The reputed trademarks had to be registered. This provision was also compliant with Art. 16(3) of the TRIPS Agreement and Art. 5(2) of the EU Directive.
The 2011 Law on Trademarks minimizes the protection of well-known trademarks in several aspects. First, unlike the former law, the owner of a well-known trademark may not oppose an application or cancel a trademark registration unless the proprietor also owns a pending application with the Kosovo IPO. The new law specifically says that for a well-known trademark to be considered an “earlier trademark”, the mark must be well known in the Republic of Kosovo on the date the application was filed or on the priority date, if claimed. Obliging the owners of well-known trademarks to have an application with the local IPO is a precondition that was not imposed by the former trademark law but is in line with the EU Trademark Directive, Art. 4(2)(d).
Second, there are no provisions on whether owners of unregistered well-known trademarks can prevent third parties from using the mark for identical or similar goods. However, the Paris Convention requires member states to provide the holders of unregistered well-known marks with the possibility to prohibit the use of trademarks under certain circumstances.
Third, owners of reputed trademarks, registered or not registered, cannot oppose a pending application or cancel a registration in case the later trademark was filed or registered for unrelated goods or services. Interestingly, however, holders of registered reputed trademarks can still prohibit use of later trademarks used for different goods or services. In contrast with Art. 16(3) of the TRIPS Agreement and 4(3) and 4(4)(a) of the EU Trademark Directive, the new law repeals protection for reputed trademarks in Kosovo for goods or services that are not identical or similar to goods or services for which the reputed trademark is registered. According to Article 7 of the new law, goods and services need to be similar even if the earlier trademark has a reputation in Kosovo and the use of the trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trademark.
Notwithstanding the drawbacks, the 2011 laws bring important positive changes and provide answers to a number of questions that surfaced when the original set of laws, now repealed, were first introduced. Having good legislation in existence, however, does not assure its efficient implementation. There are still serious issues, mostly related to the enforcement. Factors such as inexperienced courts and lack of transparency, judgment enforcement agencies and coordination among different stakeholders contribute to the still existing inadequate enforcement environment in Kosovo.
Contributed by Kujtesa Nezaj-Shehu, SDP KOSOVË
© 2011 Bloomberg Finance L.P. Originally published by Bloomberg Finance L.P. Reprinted with permission. The opinions expressed are those of the author.