The new Law on Trademarks was published in the Official Gazette on August 24 and will enter into force on September 8. The Law was approved by the Kosovo Assembly along with two other industrial property laws, the Law on Industrial Designs, which will enter into force on September 5, and the Law on Patents, which will enter into force on September 13.
The three new laws aim to bring Kosovo IP legislation in line with the European Union legislation. All three laws have introduced important novelties. Below are crucial changes introduced by the new law on trademarks. Explanations regarding the other two laws will follow.
Acquisition of Rights
The former trademark law granted trademark rights to companies even if they did not register their trademarks. The owner of an unregistered trademark was able to enforce his rights if a trademark was commonly and generally known in trade because the mark was in continuous use in Kosovo, or if it was a well-known trademark as provided by Article 6bis of the Paris Convention. According to the new law, trademark rights are acquired through registration only. Therefore, it has become even more important to have the rights registered with the Kosovo IPO.
Declaration of Use or Intention to Use the Mark
The new law abolishes this U.S-influenced requirement. When filing a trademark application, under the former law the right holder had to declare the use or the intent to use the mark in Kosovo. According to the new law, the trademark holders do not need to declare the use or the intent to use the mark at the time the application is filed.
Observation Procedure Introduced
Along with the opposition procedure, the new law introduces the observation procedure. Essentially, if an interested party opposes a trademark registration on absolute grounds, it can file an observation within three months from the publication of the application in the Official Gazette. However, the third party will not take part in the proceedings.
Possibility to Appeal IPO Decisions
Appeals of IPO’s decisions can now be filed within 15 days of the receipt of the decision. The law requires that the Ministry of Trade and Industry, under which the IPO operates, establish a commission, which will have the authority to review the appeals. There is a 30-day deadline to file a lawsuit against the commission’s decision before the competent court. Before the new law enters into force, the rules of the Law on Administrative Procedure apply.
Possibility to Request Accelerated Examination of Trademark Application
One of the most important novelties introduced by the new law is the possibility to request an accelerated examination of a trademark application. The procedure to request such examination and the official fees to be paid will be settled through an Administrative Instruction, which is to be approved in the near future by the Ministry of Trade and Industry.
Provisions Regarding Protection of Well-Known Trademarks Left Out
The new law leaves out a number of provisions regarding the protection of well-known trademarks. The old law was indeed very generous with respect to protection of unregistered well-known trademarks. According to the old law, an earlier well-known trademark, whether registered or not registered, was protected with respect to identical and/or similar goods, as well as for dissimilar goods or services. There was no need for the owner of a well-known trademark to have an application with the local IPO.
According to the new law, the owner of a well-known trademark may not oppose an application or revoke a trademark registration with respect to identical and/or similar goods/services unless the proprietor also owns a pending application or registration with the Kosovo IPO. The new law specifically says that for a well-known trademark to be considered an “earlier trademark”, the mark must be well known in the Republic of Kosovo on the date the application was filed or on the priority date, if claimed. Moreover, the owners of unregistered well-known trademarks with reputation cannot oppose an application or cancel a registration for different goods and/or services.
There are no provisions on whether the owner of an unregistered well-known trademark can prevent third parties from using a trademark.
Relative Grounds for Refusal
As for the relative grounds for refusal of trademark applications or revocation of registered trademarks, the law repeals protection for trademarks with reputation in Kosovo for goods and/or services that are not identical or similar to goods and/or services for which the reputed trademark is registered.
According to Article 7.3 of the new law, goods and/or services will need to be similar even in case the earlier trademark has a reputation in the Republic of Kosovo and the use of the trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or reputation of the earlier trademark.
No Invitations to Renew Trademarks
Under the new law, the Kosovo IPO has no obligation to officially send an invitation to the trademark owner to renew the mark, as it was the case under the old law.
Cancellation, Invalidation and Revocation Actions Possible Only Before the IPO
According to the old law, a cancellation, revocation or invalidation notice could be filed either before the competent court or with the Kosovo IPO. The new law does not provide trademark owners with the possibility to choose; the IPO is now the only authority that can decide on a cancellation, revocation or invalidation notice at the first instance.
For more information, please contact Kujtesa Nezaj-Shehu.
Source: Local Kosovo texts of the laws
