On July 28, 2022, a new trademark law entered into force in Kosovo. The main objective of this change was the harmonization of local legislation in Kosovo with Directive 2004/48/EC on the enforcement of intellectual property rights. The new law has introduced several important changes in the protection of trademarks in Kosovo, which will have a significant impact on the position of the trademark owner.

The changes could be divided into two groups: the first concerns the trademark application procedure, while the second refers to the application of trademarks.

Changes in the trademark application procedureDyoue:

1. The graphic representation of the brand is no longer required

It is now contemplated that a mark can be any mark which:

  • can distinguish the goods or services of one trademark holder from those of another, as well as
  • it is represented in the register in such a way as to enable the competent authorities and the public to define clearly and precisely the object of protection.

2. The list of goods and services must be clearly specified

It is no longer permissible to apply only to class headings in the list of goods and services, but it is now mandatory to specify the goods and services for which protection is sought.

3. Absolute grounds for refusal or invalidity

The list of absolute grounds for refusal or invalidity is now extended to include designations of origin or registered geographical indications. Protected traditional viticultural expressions and protected plant varieties will also be considered as an obstacle to the registration of a new trademark for the same goods and services.

4. Relative grounds for refusal

The novelty is the introduction of bad faith as a relative ground for refusal or invalidity of a mark. Registration of a trademark may be refused, or a registered trademark may be declared invalid if the trademark owner/applicant applied for a trademark in bad faith.

5. Restoration of Rights

This remedy is now clearly provided for in trademark law. It should provide the claimant with the last chance to take the necessary steps to avoid the loss of their rights.

Changes related to trademark protection:

1. Citation of trademarks in the dictionary

The trademark holder is now entitled to ask the publisher of a dictionary, encyclopedia or similar document to make a reference in the next edition indicating that the mark used in a text is a registered trademark . This should protect the mark from the dilution that might occur, once the public begins to identify the mark with the generic name of the goods or services for which it is registered.

2. Extensions of rights acquired by a trademark

The exclusive right of the trademark owner is extended by adding a few additional situations where he is entitled to prohibit the use of his trademark:

  • when used as the trade name of the economic entity or part of the trade name;
  • when third parties import goods into Kosovo, when these goods, including their packaging, come from countries in which the trademark owner’s right has not been exhausted;
  • in preparatory actions related to the use of packaging and other means that may lead to an infringement of rights (affixing of a mark identical or similar to the mark on the packaging, or their import, offer, placing on the market or storage for these purposes).

3. Hybrid principle of exhaustion of rights

The most significant change that will impact the future economic environment in Kosovo and the scope of powers of trademark owners is the introduction of broad exceptions to the principle of national exhaustion of trademark rights. It is now envisaged that a trademark owner cannot prohibit the use of his trademark in relation to the products he had placed in:

  • Kosovo;
  • any Member State of the European Union;
  • any member state of the European Economic Area;
  • any state in the Western Balkan region;
  • any state with which Kosovo has a free trade agreement or trade facilities.

This amendment is controversial because:

(I.) it has not been the subject of appropriate public discussion in the professional community before its promulgation; further changes may be possible in the near future;

(ii.) exceptions to the principle of national exhaustion of trademark rights are considered too broadly, in the sense that the principle of national exhaustion is not by right announced, but de facto these exceptions introduce the principle of the international exhaustion of trademark rights; and

(iii.) this solution does not comply with the European directive.

4. The non-use exception in infringement proceedings

During infringement proceedings, the defendant may ask the trademark owner to provide proof of use of the trademark for five years before initiating an infringement action. In the event that the trademark owner does not provide relevant evidence, its claim against the defendant will be dismissed. The same request that the defendant could use in the preliminary injunction procedure.

5. Call for market inspection

The trademark owner now has the option of initiating administrative proceedings before the Market Inspectorate for infringement of his trademarks. It is still unclear what scope of protection the trademark owner can expect.

6. Modification of the time limit for appealing to the IPO

The time limit for appealing against the IPO’s decision is now extended to 30 days instead of the previous 15 days.

7. Measures to stop trademark infringement

Once the trademark infringement has been established, the court has the option of imposing a legal fine in the amount of five thousand (5,000) to ten thousand (10,000) euros against the infringer to prevent the continuation of the infringement. trademark infringement.

On the other hand, the court can order financial compensation to the trademark owner instead of seizure and destruction of the infringing goods at the request of the infringer in certain specific situations.

Most of these changes represent an improvement of the trademark environment in Kosovo. It remains to be seen how these changes will be applied in practice by the competent authorities, in particular the principle of the exhaustion of trademark rights.

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