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.
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.
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.