Amended Law on Industrial Property seems to favour trademarks over trade names
On July 10 2014 Law 55/2014, which amends Law No 9947 of July 7 2008 on Industrial Property, entered into force. This update deals in particular with the relation between earlier rights, such as trade names, and trademarks.
With the latest amendments to the law, it seems that the legislature has offered certain advantages to registered trademarks over trade names: a new criterion concerning the territorial coverage of trade names has now been added as a requisite for ensuring their protection.
Trade names constitute earlier rights by default, and this concept has been recognised by the Albanian legislature in several pieces of domestic legislation, including the Law on Industrial Property.
Based on the new provisions of the Law on Industrial Property, owners of registered trademarks cannot prevent third parties from using, in commercial activities, an earlier right which extends over a specific territory, on the conditions that such earlier right is recognised by the Albanian legislation and within that specific territory.
Pursuant to the provisions of the Law on Industrial Property, a trademark cannot be registered - or, if registered, shall be liable to be declared invalid - where it infringes earlier rights such as trade names, on the condition that:
the trade name, or a substantial part of it, is identical or similar to the trademark applied for; and
the owner of the trade name produces or offers goods or services that are identical or similar to those covered by the trademark at issue.
In addition to these conditions, the legislature now seems to have added another limitation, which is the territorial criterion mentioned above - that is, the trade name should be known within a given territory in order to benefit from the provisions of the law. Therefore, the legislature has drawn a clear line with regard to the degree of protection afforded to registered trademarks and that afforded to trade names.
In short, a trade name owner, by virtue of the earlier use of its trade name, will be entitled to continue carrying out commercial activities under that trade name, and the owner of a later registered trademark cannot oppose such use for the territory at issue.
However, it is understood from the latest amendments to the law that only trade name owners that meet the criteria set out above and that use their trade names in the entire territory of Albania are eligible to oppose the registration of a trademark - or, if the trademark is registered, to request its invalidation before the court.
Owners of trade names that do not enjoy 'nationwide coverage' might face counterclaims from trademark owners on the grounds that the trade name is not widely known by consumers due to the limited territory covered by the goods/services. This is further supported by the argument that a trademark application or a registered trademark already possesses the distinctive character required by the law.
Although it appears from reading the law that owners of trade names with 'nationwide coverage' are in a safer position compared to other trade name owners, this interpretation is yet to be tested in practice by the competent authorities, such as the General Directorate of Patents and Trademarks, and by the Albanian courts.
Renata Leka, Boga & Associates, Tirana
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