Albania introduces new trademark regulation – what you need to know
- New trademark regulation entered into force on 7 June 2018
- Regulation provides definitions for traditional and non-traditional marks in line with Implementing Regulation
- Regulation adopts literal interpretation of class headings
A new Albanian trademark regulation entered into force on 7 June 2018, clarifying a range of issues raised by the changes to the Albanian Industrial Property Law introduced on 24 March 2017. This update will examine some of the most significant changes and clarifications under the regulation.
Clear definitions and representation
While the Albanian IP law defines a trademark in general terms, the new regulation more clearly defines different types of trademarks and representation requirements for the most common traditional and non-traditional trademarks. It provides definitions for word, figurative, position, pattern, colour and shape marks that are in line with the Implementing Regulation (2018/626) .
Having clear rules on trademark representation enables applicants to clearly demonstrate the nature and features of their marks, which allows for proper examination and therefore, adequate determination of the nature and scope of protection of the mark, especially in enforcement proceedings.
Literal interpretation of class headings
The regulation adopts a literal approach when interpreting the scope of protection when class headings are used in lists of goods and services in trademark applications and registrations. Article 13(2) of the regulation states that general terms, including class headings of the Nice Classification, should be interpreted as including only the goods and services covered by the literal meaning of these terms.
This provision aligns Albanian legislation with that of the European Union. Following the European Court of Justice decision of 19 June 2012 in Chartered Institute of Patent Attorneys v Registrar of Trademarks (Case C-307/10), national European IP offices have moved away from the ‘class heading covers all’ to the ‘means what it says’ approach.
In the absence of a previous provision that provided otherwise, it is likely that the authorities will apply this provision to both new and existing registrations. However, holders of existing registrations have so far been allowed to specify the list of goods and services intended to be covered when filing a renewal application, if they did not do so in their trademark application. Therefore, applicants and holders of existing registrations are advised to clearly indicate whether they are seeking protection for all goods or services that fall within a particular class or only for the specific goods or services mentioned in the class heading, at the time of registration or renewal.
The regulation also introduces an interesting provision regarding the comparison of goods. Article 13(6) specifies that when comparing goods or services, those covered by the same class should not necessarily be deemed similar and those belonging to different classes should not necessarily be considered dissimilar. This is an improvement and a departure from previous practice; the Albanian Patent and Trademark Office (ALPTO) often deemed goods or services to be similar or dissimilar solely based on their class.
Article 22(8) of the regulation provides a definition of ‘identical signs’, which does not limit the term to its literal meaning: “Signs should be considered identical where, when viewed as a whole, they are not differentiated, or contain insignificant differences.” It seems that, when drafting this provision, ALPTO considered the definition from the decision in LTJ Diffusion SA v Sadas Vertbaudet SA (Case C-291/00).
Further, according to the regulation, ALPTO can refuse a trademark ex officio if there is an earlier identical registered trademark. This is in line with the existing practice of ALPTO. However, Article 143(2)(a) of the Albanian IP law provides for oppositions based on identity, rather than leaving the issue to the discretionary power of ALPTO.
Unlike the law, the regulation also provides that ALPTO can intervene ex officio even when the goods designated by the identical marks are similar or related to each other. Therefore, the regulation significantly expands the definition of ‘identical mark’, broadening the category of trademarks in which ALPTO can intervene ex officio. This may make ALPTO decisions vulnerable to cancellation and create an inconsistent practice.
Restitutio in integrum procedure
The regulation clarifies the restitutio in integrum procedure, which was introduced for trademarks, industrial designs and geographical indications following the IP law amendments in March 2017, while it has existed for patents since 2014.
Namely, an applicant who, for justified reasons and despite due diligence, failed to perform a certain action by a certain deadline, may request restitutio in integrum if this failure resulted in a loss of rights. This request must be filed within 60 days from the removal of the cause for non-compliance and no later than one year after the expiration of the missed deadline and is subject to the payment of a fee.
ALPTO then examines the request within a month and if the request is accepted informs the applicant about the time period within which they should remedy the situation. If the request is refused, the applicant may oppose the decision before the ALPTO Appeal Board within a month after receiving the written notification.
Restitutio in integrum does not apply to opposition and cancellation proceedings held before the examination division, to appeals against decisions in these proceedings filed before the appeal board or to restitutio in integrum requests.
Determining well-known marks
Article 58(1) of the regulation specifies that, when determining whether a mark is well-known, the authorities should take into account the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by WIPO in September 1999. Although the Albanian authorities already follow the joint recommendation in practice, having it specified as binding by the regulation will help establish a consistent practice.
However, the regulation failed to determine the procedure for establishing well-known status. It remains unclear whether this should be established in a separate procedure, along with other claims, in court or before ALPTO.
Enforcement procedures before ALPTO
Further to the March 2017 IP law amendments, the regulation establishes procedural rules for oppositions and cancellation actions held before ALPTO. Under the amended IP law, ALPTO will not only examine oppositions and appeals against refusals on absolute grounds, but will also handle other actions, including cancellation, invalidation and non-use actions and claims based on well-known status. The amended law also established two instances in ALPTO, the first being the examination division and the second being the appeal board.
The regulation provides more time for the opponent and the applicant to respectively complete the file and respond to an opposition. It is now two months following ALPTO notification, while the previous regulation provided a one-month deadline.
While deadlines for enforcement cases cannot be extended or reinstated, the regulation enables claimants to act quickly. Claimants can file a formal action by completing the standard form and paying the fee within the deadline, while they can file supporting documents and arguments within two months after receiving an invitation from ALPTO to complete the file.
This possibility only exists in proceedings before the first instance of ALPTO. In case of an appeal against the first instance decision before the ALPTO Appeal Board, the appellant should file arguments and supporting documents within a month of being notified of the first instance decision.
The clarification of these procedural rules is expected to release the backlog of oppositions, cancellations and appeals caused by ALPTO’s inaction after the IP law changes entered into force in March 2017.
Official fee changes
The regulation was accompanied by the introduction of official fees for the newly established ALPTO procedures and the increase in certain existing official fees, by an average of 10%. The new official fees took effect on 7 June 2018.
While the new fees apply to applications filed after 7 June 2018, the situation remains somewhat unclear regarding the official fees for the newly established procedures, many of which have been brought before ALPTO since March 2017, but either no fee or an estimated fee was paid for them, which may not now correspond with the recently amended fees. Therefore, ALPTO may now demand retroactive payments of such fees.
Irma Cami, PETOŠEVIĆ, Tirana
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