Kosovo’s new Law on Trademarks, which entered into force on July 28, 2022, aims to harmonize local legislation with Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trademarks. The law also provides a basis for the implementation of Directive 2004/48/EC on the enforcement of intellectual property rights. The new law introduced numerous changes, the most significant of which are outlined below.
Elimination of Graphical Representation Requirement
Graphical representation is no longer required when filing a trademark application, meaning that a sign can be represented in any form that distinguishes the goods or services applied for from those of other undertakings and that enables the authorities to clearly establish the scope of protection that is sought.
Literal Interpretation of Class Headings
When filing a trademark application, it is now required to precisely define the list of goods and services for which protection is sought in such a way that enables the competent authorities to determine the extent of the protection sought on that sole basis.
Additional Absolute and Relative Grounds for Refusal
The law introduced additional absolute grounds for refusal – a sign cannot be registered if there is a conflict with an existing designation of origin, geographical indication, traditional term for wine, traditional speciality guaranteed or plant variety. In terms of relative grounds for refusal, a bad faith trademark application can now be opposed.
Exhaustion of Rights
Under the new law, trademark owners cannot prohibit the importation of genuine goods bearing their trademarks after they have placed them on any of the following markets:
- A member state of the European Union;
- A member state of the European Economic Area;
- A state of the Western Balkans region;
- A state with which Kosovo has a free trade or trade facilitation agreement.
The previous version of the law provided for the national exhaustion of rights. It remains to be seen how the new exhaustion regime will be interpreted by courts, in particular with regard to cases initiated under the previous law.
Trademark Infringement Scope Expanded
The law expands the scope of trademark infringement by establishing additional uses of similar or identical signs that may be prohibited by trademark owners, namely:
- Use of a sign as a company name;
- Use of a sign in advertising; and
- Use of a sign on packaging, labels, tags and security or authenticity features or devices, and placing these on the market.
Introduction of Disclaimers
If a trademark includes an element that might not be considered distinctive, the IPO may require the applicant to impose a disclaimer on the non-distinctive element in order to register such trademark.
The Non-Use Defense
In court proceedings, the defendant may now request that the plaintiff show the use of the trademark claimed to have been infringed. The plaintiff should prove that, during the five-year period prior to the date of filing of the infringement claim, the trademark was placed on the market in respect of the goods or services for which it was registered. In the absence of such evidence, the claim will be refused. The same defense applies to preliminary injunctions.
Appeals with the Market Inspectorate
It is now possible to enforce trademarks in an administrative procedure by filing an appeal with the Market Inspectorate against an infringer. The appeal procedure will be further elaborated in bylaws, which will be adopted by July 28, 2023.
Other changes relating to trademark enforcement include the following:
- The time frame to file an appeal against the IPO decision changed from 15 days to 30 days from the date of receipt of the decision;
- In order to prevent the continuation of infringement, the court may order the infringer to pay the trademark holder EUR 5,000-10,000 for a single instance of infringement;
- Under certain circumstances, the court may replace an order for the seizure and destruction of infringing goods with monetary compensation for the injured party;
- The criteria for the assessment of damages have been specified – when determining the amount of damages, the court will take into account all relevant aspects such as adverse economic consequences, including lost profits incurred by the injured party, any unjust profit made by the infringer and, where appropriate, other elements such as economic factors and the moral prejudice suffered by the right holder;
- In line with the EU Enforcement Directive, the new law provides that injunctions in infringement cases should be fair, equitable, proportionate and affordable; and
- The new law also includes provisions clarifying the time frames for initiating proceedings with the court. Infringement claims, claims relating to the seizure and destruction of goods and claims for damages may be filed within three years from the date the right holder became aware of the infringement and the infringer, and no later than five years from the date the infringement occurred.
By: Kujtesa Nezaj-Shehu
For more information, please contact Kujtesa Nezaj-Shehu.