IP News

Following the recent entry into force of four new IP-related administrative instructions, the Kosovo Ministry of Trade and Industry signed two more IP-related Administrative Instructions, which entered into force this month.

The first AI No. 13/2016, in force as of September 2, 2016, thoroughly describes the procedures such as the filing of a patent application, patent registration, publication and the recording of changes in the register.

The second AI No. 14/2016, in force as of September 7, 2016, clarifies the procedures to be followed and documents to be submitted when taking actions such as filing requests to record changes or renew trademarks. It is important to note that the AI requires a Power of Attorney to be enclosed with each of these requests. The AI also introduces some new provisions, which were not covered by the previous by-law, e.g. provisions describing the procedure to be followed if an observation notice has been filed.

For more information, please contact Kujtesa Nezaj-Shehu.

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.