IP News

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.

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.

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.

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.

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.