Amendment introduces bad-faith registration as ground for invalidity
In the latest amendment (Law No 55/2014) to the Law on Industrial Property, the legislature has dealt more extensively with the concept of ‘bad faith’ in trademark applications by introducing a ground for invalidity of a trademark registration - that is, when the application was filed with the intent to deceive.
It should be noted that the Law on Industrial Property does not provide for a definition of ‘bad faith’; however, the concept is part of the domestic legislation.
Before the amendment to the law, the term ‘bad faith’ was reflected only in Article 160, which deals with the exhaustion of rights. This article establishes that, where the owner of an earlier trademark has consented, for a period of five consecutive years, to the use of a later registered trademark, it is no longer entitled to apply for the invalidation of the later mark, unless that mark has been applied for in bad faith.
As indicated above, with the latest amendment the legislature introduced bad-faith registration as a ground for invalidity of a trademark. The first paragraph of Article 173 of the law provides that interested persons can request that the court declare that a trademark is invalid in cases where the application for registration was made in bad faith.
In the light of the above, one can draw the following conclusions. First, the General Directorate of Patents and Trademarks (GDPT) is not entitled to assess ex officio the applicant’s bad faith during the trademark registration process and, second, trademark owners cannot bring the matter up before the GDPT’s Board of Appeal in opposition cases.
Once in front of the court, the burden of proof lies with the plaintiff, who must prove the existence of bad-faith intent on the applicant's part at the time of filing the application. When providing evidence to the court, a relevant aspect may be whether the applicant was aware that the sign was used by another party at the time of filing the application and, further, whether the applicant intended to materialise the prejudice against the rights holder. Another relevant aspect may be whether the parties had business relations prior to the filing of the trademark application, and whether they pursued business activities in the same market segment.
It remains to be seen how right holders will make use of the new provisions in practice, taking into account the fact that the judiciary system in Albania has little expertise in this respect, as the Albanian jurisprudence is so far lacking with regard to bad-faith trademark registrations.
Renata Leka, Boga & Associates, Tirana
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