IP News

  • Kosovo Amends Patent and Trademark Legislation

    The Laws amending the Law on Trademarks and the Law on Patents entered into force in Kosovo on September 8, 2015. The changes aim to bring Kosovo IP legislation in line with the European Union legislation. Below is the summary of the most important changes.

    Patents

    The Law amending the Law on Patents does not introduce any changes in substantive patent law nor does it change the patent registration procedure before the Kosovo Industrial Property Office. It rather clarifies the role, the activities and the status of the Industrial Property Agency, i.e. reflects the institutional conversion of the Industrial Property Office into the Industrial Property Agency.

    However, the amendments clarify some areas of uncertainty, namely, it is now specified that when filing a national patent application claiming the Convention priority, the translation of the priority document into the official language can be submitted within a three-month period from the day of the receipt of the invitation. The deadline to submit the certified priority document itself remains unchanged (90 days from the filing date of the application).

    Another rather substantial change concerns the annuity payments. According to the basic law, only the registered patent and trademark attorneys with the Kosovo IP Agency could pay the annuities. According to the amendments, any person can pay patent annuities.

    In addition, the amendments clarify and change some of the rules related to the supplementary protection certificates (SPCs). The SPC provisions will enter into force at a later date.

    The amendments also touch upon the provisions related to the remedies used in case of patent infringement. The remedies available to patent holders remain unchanged, but the criteria that the plaintiff needs to establish when claiming some of those remedies have been either clarified or, in certain circumstances, revised.

    Trademarks

    The Law amending the Law on Trademarks also does not introduce any changes to the substantive part nor to the trademark registration procedure. However, the amendments introduce some changes and additions to the basic law.

    As the basic law did not include provisions on reinstatement or restoration of rights, up until recently the parties relied on the provisions of the Law on Administrative Procedure as lex generalis. However, this law did not provide a subjective deadline upon which a party could request the reinstatement of rights; it only said that the request for restitution could be filed within a period of 10 days from the removal or elimination of obstacles, but no later than one year from the last day the omitted deadline expired. The new provision that has been added includes a subjective deadline, meaning that the holder can take action within a period of three months from the date they found out that a certain right had been lost and within the objective deadline of one year.

    Another change concerns the renewal of trademarks. Up until now, if the holder wanted to limit the list of goods/services when renewing a certain trademark, he had to file a separate request and pay an additional fee. The amendments make it possible to limit the list by filing the renewal request only.

    The amendments also introduce changes to provisions related to the available remedies in case of trademark infringement. The Law on Contested Procedure already covered most of the issues introduced by the amendments. However, an important change is that in addition to requesting the removal, confiscation and destruction of infringing goods, the plaintiff can now request the removal, confiscation and destruction of the materials and tools used in the production of these goods.

    By: Kujtesa Nezaj-Shehu

    For more information, please contact Kujtesa Nezaj-Shehu.

  • Bayer Victorious in Trademark Dispute against Kosovo Pharmacy

    In February 2014, the Appellate Court of Prishtina ruled in favor of German pharmaceutical company Bayer AG in a trademark infringement lawsuit against a local Kosovo pharmacy operating under the name DPF Bayer. The Appellate Court’s decision is final and not subject to appeal.

    In March 2011, Bayer AG initiated the lawsuit at the Commercial Court in Prishtina (now Basic Court of Prishtina, Department of Commercial Matters) arguing that the defendant’s use of the mark Bayer as a trade name and a service mark constituted trademark infringement. Bayer AG also filed a separate claim on the basis of infringement of a well-known trademark.

    At the time of filing the lawsuit, Bayer AG held several international registrations extended to former Yugoslavia and/or Serbia, which were subsequently re-registered in Kosovo during the revalidation period.

    The defendant argued that the plaintiff had no capacity to sue because the plaintiff had no business registration in Kosovo, i.e. the defendant did not make a distinction between a trademark registration and a business registration.

    The defendant also referred to the Article 14.3 of the (now former) Law on Trademarks, according to which no infringement proceedings may be initiated before the date of publication of trademark registration, i.e. the revalidation procedure for Bayer AG’s international registrations had not been completed before Kosovo’s PTO at the time Bayer AG filed the lawsuit. However, the court permitted Bayer AG to file the lawsuit because of Bayer AG’s international registration with WIPO.

    Furthermore, the defendant argued that the plaintiff had acquiesced in the defendant’s use of its trademark claiming that Bayer AG had not opposed the use of its mark for more than five successive years.

    In June 2011, the Commercial Court ruled that although the plaintiff had the capacity to sue and is entitled to trademark protection under Kosovo’s trademark law, the plaintiff cannot ask the defendant to cease using the mark because, as per Article 49 of the Law on Trademarks no. 02/L-54 (now repealed), the plaintiff tacitly approved the defendant’s use of the mark. The court did not provide any further details as to why the conditions laid down by Article 49 were considered relevant in the dispute.

    The Appellate Court canceled the decision of the Commercial Court stating that the Article 49 applies only to cases where the plaintiff acquiesced to the use of the trademark – not the trade name. For that reason, the Appellate Court ruled that the first-instance court should not have accepted the defendant’s acquiescence defense in this case. In other words, the pharmacy was registered according to the Law on Business Organizations, which makes the Article 49 of the Law on Trademarks inapplicable to this case.

    By: Florentina Grubi

    For more information, please contact Florentina Grubi.

  • Kosovo Preparing Amendments to Patent and Trademark Laws

    Kosovo has recently drafted amendments to its trademark and patent laws, which the Kosovo Parliament is expected to adopt this year.

    The amendments aim to bring Kosovo’s IP legislation in line with European Union’s directives, as one of the requirements for EU integration, as well as create a better and safer environment for investments and the protection of IP rights.

    The draft amendments are available in Albanian, Serbian and English at this web page. The public’s comments and opinions will be accepted until May 28 via this email address.

    We will provide a detailed analysis of the amendments as soon as the final drafts of the laws amending and supplementing the trademark and patent laws become available.

    For more information, please contact Nora Makolli.

  • Registration of GIs and DOs with Kosovo IP Agency Possible as of January 30

    Further to the entry into force of the Law on Geographical Indications (GIs) and Designations of Origin (DOs) on July 19, 2013, the Ministry of Trade and Industry approved the Administrative Instruction no. 05/2014 on registration procedure for the GIs and DOs and the Administrative Instruction no. 04/2014 on official fees for the registration of GIs and DOs. The administrative instructions entered into force on January 30, 2014.

    The Administrative Instruction no. 05/2014 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.

    The interested parties are now able to apply for the registration of their GIs or DOs with the Kosovo IP Agency, responsible for the registration procedure.

    The administrative instructions are available in English on the Ministry of Trade and Industry’s website.

    Prepared by: Florentina Grubi

    For more information, please contact Florentina Grubi.
     

  • New GI Law Enters into Force in Kosovo

    The new Law on Geographical Indications (GIs) and Designations of Origin (DOs) entered into force in Kosovo on July 19, 2013.

    According to the new law, GIs can be registered at Kosovo’s IPO. Any GI in the name of a region, a specific place or in special cases the name of a state, which is used to describe a specific product originating from that region or state can be registered.

    Registered GIs or DOs will be protected against any direct or indirect commercial use of products that are not registered, any misuse, imitation or infringement, each inaccurate (false) or misleading indication in terms of genealogy, origin, nature or essential qualities of the product, and every other practice or action that may mislead the consumer as to the true origin of the product.

    Legal protection of GIs and DOs as foreseen by the new law covers several actions, including the procedure of finding and stopping the infringement, the application for the seizure and destruction of products, and the application for damage compensation. Moreover, the law includes penalty provisions including monetary fines in various amounts depending on different categories.

    The full text of the law is available in English at this link.

    For more information, please contact Florentina Grubi.

  • New Kosovo Law on Consumer Protection Introduces Provisions on Comparative and Misleading Advertising

    The new Kosovo law on consumer protection that entered into force in November 2012 introduced provisions on comparative and misleading advertising.

    The new law defines misleading commercial practices and lays down the conditions under which comparative advertising is permitted. If the prescribed conditions are contravened, interested parties can file a complaint with the Ministry of Trade and Industry Inspectorate or other inspection bodies. The competent authority may prohibit comparative and misleading advertising through an ordinance and the costs of the broadcaster will be borne by the advertising sponsor.

    The publisher of the advertising is required to submit evidence confirming the accuracy of the factual claims contained in the contested advertisement within seven days of receiving the ordinance. Failure to do so will be taken to mean that the advertising is misleading, questionable and inaccurate. No further consequences have been defined by the law.

    By: Florentina Grubi

    For more information, please contact Florentina Grubi.

    Source: The text of the law

  • New Law on Courts Enters into Force in Kosovo

    For the past two years, the Kosovo judicial system has undergone reorganization. According to the Law on Regular Courts of 1978, which was in force until the end of 2012, the Prishtina District Commercial Court had the jurisdiction to adjudicate industrial property related cases, while copyright-related matters were under the jurisdiction of the District Court of Prishtina.

    On January 1, 2013, a new Law on Courts (No. 2010-199) came into force. According to the new law, the Kosovo court system will consist of the basic courts (courts of first instance), the Court of Appeals (second instance court, seated in Prishtina) and the Supreme Court (seated in Prishtina).

    Although commercial-related cases fall under the jurisdiction of the basic courts, the Department for Commercial Matters has been established to operate only in the Basic Court of Prishtina and cover the entire territory of the Republic of Kosovo. The department will have the competence to, among others, adjudicate industrial property infringement cases as well as copyright violations. One judge will be assigned to hear these cases.

    The Commercial Matters Department will also be established within the Court of Appeals, which will serve as a second instance court with competence throughout the entire territory.

    The Supreme Court is the highest judicial authority in Kosovo and has territorial jurisdiction over the entire territory of Kosovo.

    For further information, please contact Kujtesa Nezaj-Shehu.

  • Anti-Counterfeiting and Piracy Task Force Established in Kosovo

    On January 30, 2013, the Kosovo government approved the decision to establish a task force against counterfeiting and piracy. The establishment of the task force was foreseen by the national strategy for combating counterfeited and pirated products, adopted on October 4, 2012.

    The task force will consist of the representatives of the Copyright Office, Trade Inspectorate, IPO, Kosovo Customs, Kosovo Police, and Ministry of Justice.

    The mission of the task force will be to:

    • Promote effective cooperation between public authorities and social and economic organizations in the field of copyright protection;
    • Ensure and coordinate the implementation of the strategy and the action plan against counterfeiting and piracy;
    • Develop and implement public awareness programs and campaigns; and
    • Prepare and deliver proposals for drafting legislation related to copyright enforcement.

    On the same date, the Kosovo government also adopted the regulation on mediation in the field of copyright and related rights outlining mediation procedures between copyright collecting societies and their members.

    For further information, please contact Kujtesa Nezaj-Shehu.

    Source: The Ministry of Culture, Youth and Sports of Kosovo

  • INTA Roundtable in Kosovo

    On December 14, 2012, SDP KOSOVE organized an INTA roundtable in Kosovo, on the topic of protection and enforcement of well-known marks. This was the first event ever organized in Kosovo on this topic. Given the ambiguous provisions of the well-known marks law in Kosovo and the lack of court practice this event was very welcomed by the attendees.

    A total of 32 people from Kosovo, Macedonia and Albania attended the roundtable, including judges, attorneys, students, patent and trademark agents and representatives from the PTO, Copyright Office, the Customs and the Kosovo Police.

    The speakers included Ms. Kujtesa Nezaj-Shehu, director of SDP KOSOVE, Ms. Suzana Sejdiu, president of the District Commercial Court of Prishtina, and Mr. Ignacio Lazaro, attorney-at-law. The moderators of the roundtable were Ms. Nezaj-Shehu and Ms. Nora Makolli, associate and trademark and patent agent at SDP KOSOVE.

    For copies of the presentations, please contact Ms. Kujtesa Nezaj.

  • Kosovo Adopts Strategy to Combat Counterfeiting and Piracy

    On October 4, 2012, the Kosovo government adopted the national strategy for combating counterfeited and pirated products for the 2012-2016 period, drafted by the Copyright and Related Rights Office in cooperation with other local institutions responsible for the enforcement of IP rights.

    The strategy aims to create mechanisms for combating counterfeiting and piracy and by doing so help improve Kosovo’s image and economy.

    The strategy defines the objectives to be reached during the 2012-2016 period, the most important of which are to:

    • Reduce piracy and counterfeiting;
    • Improve the productivity of the creative industry;
    • Identify the main causes of increase in piracy and counterfeiting;
    • Fight against the informal economy and create favorable conditions for foreign investments;
    • Enhance international and national inter-institutional cooperation;
    • Achieve European standards.

    The strategy also foresees the establishment of a task force, whose mission will be to:

    • Promote effective cooperation between public authorities and social and economic organizations in the field of copyright protection;
    • Ensure and coordinate the implementation of the strategy and the action plan against counterfeiting and piracy;
    • Develop and implement public awareness programs and campaigns;
    • Prepare and deliver proposals for drafting legislation related to copyright enforcement.

    By: Kujtesa Nezaj-Shehu

    Source: The text of the strategy