IP News

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.

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.

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.

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.

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.