IP News

Four new IP-related administrative instructions have recently entered into force in Kosovo.

The Administrative Instruction (AI) No. 08/2016, effective as of July 4, 2016, relates to the accelerated examination of trademark applications, which is still available if there has been an alleged infringement of trademark rights. When requesting such examination, the applicant must indicate the trademark filing details and submit:

• Copy of the trademark application as filed;
• Arguments proving the alleged trademark infringement; and
• Proof of payment of the official fee per trademark in the amount of EUR 120.

Previously, the applicant also had to submit the proof that a civil or a customs action had been initiated.

The accelerated examination request may be submitted at any time after the filing date, as no time frame is specified. The IP Agency will decide on the request within 15 days from the filing date of the request.

The second AI, No. 10/2016, effective as of August 2, 2016, introduces a single fee system and amends certain official fees. Previously, the Kosovo IPO provided two different schedules of fees, one for legal entities and one for natural persons. The new AI provides for a single fee schedule for both categories of applicants. Certain official fees have increased significantly. For instance, the fee for filing oppositions has doubled, from EUR 50 to EUR 100, while the fee for invalidation actions increased from EUR 50 to EUR 200.

The third AI, No. 11/2016, effective as of August 12, 2016, was approved following the entry into force of the new law on geographical indications and designations of origin, in January 2016.

Finally, the fourth AI, No. 12/2016, on the industrial design registration procedure entered into force on August 22, 2016, providing detailed information on the procedures prescribed by the new law on industrial design, in force as of January 2016.

These two AIs thoroughly describe the procedures such as application, registration, publication, recordal of changes, renewal and termination of validity for GI(s) and industrial designs.

The new AIs on trademark and patent registration procedures are expected to enter into force soon.

By: Kujtesa Nezaj-Shehu

For more information, please contact Kujtesa Nezaj-Shehu.

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.