IP News

  • Parallel Imports in Kosovo: Slight Improvement in Enforcement

    While Kosovo faces many legal challenges regarding the infringement of intellectual property rights, parallel import – the importation and sale of branded goods without the trademark holder’s consent – has become a particularly complex issue to tackle. Even though there have been recent court decisions against parallel importers, rights holders still face difficulties when enforcing their rights when the goods in question are deemed to be genuine. 

    Kosovo applies the principle of national exhaustion. According to the Kosovo Law on Trademarks, trademark holders can oppose the importation of genuine goods bearing their trademarks by third parties without their consent. The law explicitly states that the use of trademarks without the rights holder’s authorization constitutes trademark infringement and thatthe trademark right is exhausted only when the good or service bearing the trademark is sold in Kosovo under the authorization of the trademark holder.

    However, the Kosovo Law on Customs Measures for Protection of Intellectual Property Rights does not allow Customs to seize original goods imported to Kosovo without the trademark holder’s consent, which complicates enforcement. Additionally, local case law has been inconclusive. 

    A significant step forward was made recently when the Court of Appeals in Prishtina issued a ruling on November 7, 2018 confirming the right of the trademark holder to ban the unauthorized importation and sale of goods bearing his/her trademark, regardless of the goods’ authenticity. Namely, the defendant imported apparel items bearing the trademark of a well-known multinational fast fashion company. Kosovo customs officials detained the goods, suspecting they were counterfeits. The trademark holder confirmed that the goods were indeed counterfeits, and the first instance court ruled in favor of the plaintiff.  

    The defendant filed an appeal stating that the goods were purchased from an authorized dealer, but the Court of Appeals ruled in favor of the plaintiff, claiming that it is sufficient to ascertain that the importation and placing of the goods on the market occurred without the rights holder’s authorization.

    Another noteworthy case in Kosovo involved a local importer who intended to import a significant number of bottles bearing a well-known whiskey brand without the trademark holder’s consent. The local importer removed the identification code from the bottles and the goods were seized by Kosovo Customs under the suspicion of being counterfeit, but were later released because it was determined they were genuine.

    The plaintiff argued that such unauthorized use constituted trademark infringement and emphasized that exhaustion of rights did not occur in line with Articles 8 and 12 of the Kosovo Trademark Law. The whiskey producer further stated that the goods were imported without trademark owner’s consent, through channels different from their authorized representative’s, and that the product was damaged by the removal of the product code. Furthermore, the damaged product was placed on the market, creating confusion regarding the product’s origin and damaging its quality standards.

    While the court of first instance ruled against the plaintiff, the Court of Appeals in Prishtina ruled that such unauthorized import constituted trademark infringement. The case ended up in the Supreme Court, which upheld the appellate court’s decision on December 9, 2015 confirming that trademark infringement indeed occurred and that parallel import is prohibited in Kosovo.

    However, court practice has been inconsistent and needs significant improvements. There are still many gaps in legislation regarding parallel imports and exhaustion of rights which allow for various inconsistent interpretations. It remains to be seen how the situation will evolve in the coming years.

    By: Florentina Grubi

    For more information, please contact Florentina Grubi

  • Kosovo Appellate Court Confirms National Exhaustion of Rights Is Applicable

    On November 7, 2018, the Court of Appeals in Prishtina issued a ruling confirming the right of the trademark holder to ban the unauthorized importation and sale of goods bearing his/her trademark, regardless of the goods’ authenticity and the fact that they were purchased from a dealer authorised to sell them outside Kosovo.

    This decision is in line with Article 8 of the Kosovo Law on Trademarks, which states that it is sufficient to ascertain that the importation and placing of the goods on the market occurred without the rights holders’ authorization. However, local case law has been inconclusive and such cases have rarely reached the appellate court. This ruling is significant because it will allow rights holders to invoke it in their struggle against this type of trademark infringement.

    In May 2015, the defendant in this case imported apparel goods bearing the trademark of a well-known multinational fast fashion company from Bangladesh to Kosovo. Kosovo customs officials detained the goods, suspecting they were counterfeits. The trademark holder confirmed that the goods were indeed counterfeits, and the Commercial Matters Department of the Basic Court of Prishtina ruled in favor of the plaintiff.

    The defendant filed an appeal stating that the goods were purchased from an authorized dealer, but the Court of Appeals ruled that the trademark holder may request third parties to refrain from unauthorized importation and sale of goods bearing their trademark regardless of their authenticity and even if they were purchased from an authorized dealer. The court underlined that Kosovo applies the principle of national exhaustion of rights and that, in case at hand, plaintiff’s trademark rights are exhausted only if the plaintiff places the goods on the market.

    By: Kujtesa Nezaj-Shehu

    For more information, please contact Kujtesa Nezaj-Shehu.

  • New Law on Customs Measures Enters into Force in Kosovo

    The new Law on Customs Measures for Protection of Intellectual Property Rights enters into force in Kosovo on May 23, 2018 introducing important changes intended to align local customs procedures with Regulation (EU) No. 608/2013 concerning customs enforcement of IP rights.

    Besides abolishing the annual EUR 100 (USD 118) customs watch application fee, the new law further streamlines the simplified procedure for the destruction of counterfeit goods and introduces the small consignments procedure.

    According to the amended simplified procedure, rights holders are no longer required to send a cease and desist letter to notify the owner of the goods about the seizure and to seek consent for destruction. Instead, Kosovo Customs will notify both the rights holder and the owner about the detention within one working day. The rights holder will then have 10 working days to confirm whether the goods are infringing and consent to the destruction of the goods by sending a written notification to the Customs. In the meantime, the owner will also have 10 working days to agree or object to the destruction of goods. As under the previous law, if the owner does not explicitly object to the destruction, the Customs will destroy the goods (tacit consent). The goods will be released if the rights holder does not confirm that the goods are infringing or does not consent to the destruction, or if the owner of the goods has opposed the destruction and the rights holder has not filed a lawsuit within a maximum of 20 working days after the detention of the goods.

    The new law introduces a new procedure under which small consignments (up to three units or weighing less than 2kg) can be destroyed without the explicit rights holder’s consent. When filing a customs watch application, rights holders may opt in for this procedure, according to which, after seizing a small consignment, the Customs will inform the owner of the goods within one working day that it intends to destroy the goods. The owner then has 10 working days to either oppose the destruction or consent to it. If the owner agrees or fails to respond, the goods will be destroyed. If the owner opposes the destruction, the process is the same as in the simplified procedure.

    The new law also clarifies that rights holders are:

    • Required to inform the Customs that an IP right has ceased to have effect within one working day.
    • Required to act according to the provisions of the simplified procedure. If they fail to do so, they must be able to provide a reason deemed appropriate by the Customs.
    • Only allowed to use information provided to them by the Customs, such as information on the quantity and nature of the detained goods and contact details of the owner of the goods, for the following purposes: (1) to contact the importer to get consent for the destruction; (2) to initiate trademark infringement or damage compensation proceedings; and (3) to initiate a criminal procedure. The use of such information in other ways could be considered misuse.

    If rights holders fail to act as specified by the new law, they could face sanctions varying from monetary fines and revocations of customs watch applications to not being allowed to re-apply for customs watch for the IP right in question for a period of one year.

    By: Kujtesa Nezaj-Shehu

    For more information, please contact Kujtesa Nezaj-Shehu.

  • Kosovo IPO Launches Online Trademark And Patent Database

    On December 27, 2017, the Kosovo Industrial Property Office (IPO) published its online trademark and patent database, allowing users to browse through patent and trademark applications and registrations. The database is available in the Albanian language only.

    Although the IPO made every effort to complete the database with all existing information, the IPO highlighted that the database should only be used for guiding purposes.

    For more information, please contact Kujtesa Nezaj-Shehu.

  • Florentina Grubi Brings INTA’s Unreal Campaign to Kosovo

    SDP KOSOVË Associate Florentina Grubi has brought INTA’s Unreal Campaign to Kosovo as part of her work for the Europe and Central Asia Subcommittee of the INTA’s Anti-Counterfeiting Committee.

    So far Florentina has organized three student engagement sessions in Prishtina, Kosovo – she presented to a total of 100 students at the Mileniumi i Tretë High School, Universum College and the American School of Kosova on November 1, 8 and 22, 2017, respectively. More engagement sessions are planned for December 2017.

    The Unreal Campaign is INTA’s public awareness initiative designed to educate high school and university students about the importance of trademarks, intellectual property, and dangers of counterfeits. The Campaign has successfully reached over 9,000 students since its launch in 2012.

    For more information, please contact Florentina Grubi.

     

  • Administrative Instructions on Patent and Trademark Registration Procedures Enter into Force in Kosovo

    Following the recent entry into force of four new IP-related administrative instructions, the Kosovo Ministry of Trade and Industry signed two more IP-related Administrative Instructions, which entered into force this month.

    The first AI No. 13/2016, in force as of September 2, 2016, thoroughly describes the procedures such as the filing of a patent application, patent registration, publication and the recording of changes in the register.

    The second AI No. 14/2016, in force as of September 7, 2016, clarifies the procedures to be followed and documents to be submitted when taking actions such as filing requests to record changes or renew trademarks. It is important to note that the AI requires a Power of Attorney to be enclosed with each of these requests. The AI also introduces some new provisions, which were not covered by the previous by-law, e.g. provisions describing the procedure to be followed if an observation notice has been filed.

    For more information, please contact Kujtesa Nezaj-Shehu.

  • Four IP-Related Administrative Instructions Enter into Force in Kosovo, IPO Changes Official Fees

    Four new IP-related administrative instructions have recently entered into force in Kosovo.

    The Administrative Instruction (AI) No. 08/2016, effective as of July 4, 2016, relates to the accelerated examination of trademark applications, which is still available if there has been an alleged infringement of trademark rights. When requesting such examination, the applicant must indicate the trademark filing details and submit:

    • Copy of the trademark application as filed;
    • Arguments proving the alleged trademark infringement; and
    • Proof of payment of the official fee per trademark in the amount of EUR 120.

    Previously, the applicant also had to submit the proof that a civil or a customs action had been initiated.

    The accelerated examination request may be submitted at any time after the filing date, as no time frame is specified. The IP Agency will decide on the request within 15 days from the filing date of the request.

    The second AI, No. 10/2016, effective as of August 2, 2016, introduces a single fee system and amends certain official fees. Previously, the Kosovo IPO provided two different schedules of fees, one for legal entities and one for natural persons. The new AI provides for a single fee schedule for both categories of applicants. Certain official fees have increased significantly. For instance, the fee for filing oppositions has doubled, from EUR 50 to EUR 100, while the fee for invalidation actions increased from EUR 50 to EUR 200.

    The third AI, No. 11/2016, effective as of August 12, 2016, was approved following the entry into force of the new law on geographical indications and designations of origin, in January 2016.

    Finally, the fourth AI, No. 12/2016, on the industrial design registration procedure entered into force on August 22, 2016, providing detailed information on the procedures prescribed by the new law on industrial design, in force as of January 2016.

    These two AIs thoroughly describe the procedures such as application, registration, publication, recordal of changes, renewal and termination of validity for GI(s) and industrial designs.

    The new AIs on trademark and patent registration procedures are expected to enter into force soon.

    By: Kujtesa Nezaj-Shehu

    For more information, please contact Kujtesa Nezaj-Shehu.

  • Original, Notarized PoA Required for Each Action before Kosovo IPO

    As of June 8, 2016, the Kosovo IPO does not accept any action if not accompanied by an original Power of Attorney (PoA) form. Alternatively, a notarized copy of the original is acceptable. Kosovo notary public will only certify a copy if the original is notarized in the country of origin. Therefore, we recommend that each PoA sent, as of now on, is notarized.

    This change applies to all filings before the Kosovo IPO, such as new applications, renewals, responses to office actions, oppositions, recordals, or any other action before the IPO.

    Therefore, scanned copies of PoAs will not suffice to meet any deadline or obtain a filing date.

    In this regard, we have to ask our clients to send us an original, notarized PoA with filing instructions of any nature. As mentioned, we will be able to produce notarized copies locally, but only based on an already notarized original.

    For more information, please contact Kujtesa Nezaj-Shehu.

  • New Law on Geographical Indications Enters into Force in Kosovo

    The new law on geographical indications and designations of origin entered into force in Kosovo on January 27, 2016.

    The aim of the new law is to further harmonize Kosovo’s legislation with the EU and bring it in line with Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs and Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

    The new law more precisely defines identical designations of origin or geographical indications, i.e. homonyms.

    Provisions on trans-border geographical indications have been added.  Several groups may submit a joint application in the case of a name designating a trans-border geographical area or a traditional name connected to a trans-border geographical area.

    Provisions on cancellation have been amended. Under the new law, the decision on a protected designation of origin or a protected geographical indication may be cancelled if no product is placed on the market for at least seven years.

    Provisions on protection of traditional specialties have been introduced, explaining the criteria, product specifications and the registration procedure in general.

    The applicable bylaw is still the Administrative Instruction No. 05/2014, which provides detailed information on the procedures prescribed by the law, namely the procedures of application, registration, publication, recordal of changes, renewal, termination of validity, etc.

    For more information, please contact Florentina Grubi.

  • Kosovo Amends Industrial Design Law

    The new industrial design law entered into force in Kosovo on January 15, 2016. The law has been harmonized with the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs and the Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

    Under the new law, the renewal request should be submitted within the 12-month period prior to the expiration of design right. The former law did not specify the exact time frame.

    The new law clarifies the procedure for the assignment of rights by including necessary steps to be taken and the required documents. Full or partial transfer of rights is possible; an assignment contract or a certified statement is necessary in order to register such rights.

    As the previous law, the new law also excludes the possibility for a legal person to be considered as the designer; the designer can only be a natural person.
    As under the former law, formal examination is the only examination performed by the IPO.

    The new law introduces compensation for damages as a legal remedy, under the general rules relating to unjust enrichment.

    Under the new law, industrial designs are also protected under copyright law. The former law did not include any provisions on the relationship of designs and other IP rights.

    The applicable bylaw remains the Administrative Instruction No.11/2012 on the industrial design registration procedure.

    For more information, please contact Florentina Grubi.