IP News

On December, 29, 2009, the Parliament of Kosovo approved the Law on Customs Measures for Protection of Intellectual Property Rights.
The new regulation will enter into force 15 days after its publication in the Official Gazette of the Republic of Kosovo, following its ratification by the President of Kosovo, which is expected within the next few weeks.

The new regulation replaces the previous regulation, Implementing Customs measures regarding goods Infringing Intellectual Property Rights, and brings it in line with the corresponding EU regulations.

The new regulation provides advantages to IP right holders. According to the new regulation, IP right holders are not required to go to court in order to obtain approval for the destruction of counterfeit or pirated goods, as long as the consent of the importer is obtained.

With respect to the filing of customs application, the new regulation does not explicitly establish the obligation to submit certificates of registrations with the customs application. This is an important point as the Kosovo PTO may not be able to promptly issue the necessary certificates of registration, at least not in the near future, due to the extremely high volume of applications received since its opening in November 2007.

In the absence of a certificate of registration, IP right holders may support their rights before the Customs authorities by other means provided by the new Customs Regulations, such as the well-known mark argument.

For more information, please contact Florentina Grubi.

Source: The Law on Customs Measures for Protection of Intellectual Property Rights; Parliament of Kosovo website

A seminar on patents, which was organized by the European Patent Office (EPO), was held in Prishtina, Kosovo, on October 28 and 29.
The seminar, which was attended by approximately 20 participants, focused on EU patent filings and included topics such as: patentability, exclusions according to the EU system, the Inventive Step, patents descriptions, claims, and drawings.

The participants were shown how to file patents with the EPO through practical examples and were acquainted with the esp database (an EPO patent database).

For more information, please contact Asdren Iberhysaj.
 

The government of Kosovo has been working with the EU’s rule of law mission in Kosovo (EULEX) and the EU’s project Technical Assistance to Customs and Tax Administrations (TACTA) on new customs regulations regarding goods infringing intellectual property rights.

As part of this project, the legal experts are drafting an amendment to the IPR Regulation 2008/22 in order to bring it fully in line with the EU Regulation 1383/2003. One of the main points to be addressed in the amendment is the fast track procedure, which would allow fast destruction of counterfeit goods.

Under the EU Regulation, it is possible to destroy counterfeit items without any need to go to the court, in case the owner or the importer of the goods gives consent, whereas in Kosovo, it is necessary, under the current regulations, to go to the court to obtain the right to seize and destroy the counterfeits.

The government of Kosovo is currently reviewing the draft after which it will require the parliamentary approval.
 

We reported last month that Kosovo’s Intellectual Property Office held an official ceremony to mark the issuance of its first certificates for intellectual property rights.

The certificates issued are certificates of registrations confirming revalidations in Kosovo of the registered IP rights in the former Yugoslavia. It is unlikely that the IPO will be able to issue a large number of these certificates any time soon since the office employs only a few people. The issuance may also be problematic because the certificates only show basic data of the rights revalidated in Kosovo, but no details such as the lists of goods.

Kosovo’s IPO has not yet issued any registration certificates for new trademarks, patents or designs.

The basic trademark database should be completed soon and the searches possibly enabled in early 2010.
 

Over the summer a much anticipated law on trademarks was finally promulgated by the Special Representative of the Secretary General of the UN. The new law came into force in Kosovo on June 28, 2006.

The law, although in compliance with most international norms and standards, does not provide for any sunrise period or the possibility of any revalidation of Serbian trademark registrations, as expected.

A Patent and Trademark Office has yet to be established in this province which is seeking full independence from Serbia but which already functions as an independent state.

In the meantime, we advise our clients to ensure that they have valid applications and registrations in the surrounding countries of Macedonia and Albania. Unlike Serbia, these two countries have close ties with Kosovo and it is possible that Kosovo will allow for revalidation of registrations that are valid in these two countries once the Patent and Trademark Office is opened.

In addition, it is important to note that it is already possible to enforce IP rights in Kosovo and that a few enforcement cases are underway. The legal basis for enforcement may vary from case to case but enforcement is nonetheless possible.

Lastly, we have reviewed the draft of the Kosovo Customs Regulations. One of the more interesting parts of the draft is the definition of “counterfeit”. According to the draft, counterfeits include goods bearing trademarks identical to a trademark validly registered in “any country”. This means that the enforcement of these regulations would not be dependant on the establishment of a working PTO in Kosovo.

The future of the province, which is seeking full independence from Serbia, is still set to be determined by the end of 2006.