Amendments to Law on Trademarks come into force

The Laws Amending the Law on Trademarks and the Law on Patents entered into force in Kosovo on September 8 2015. The changes aim to bring Kosovo's IP legislation into line with EU legislation. Below is a summary of the most important changes, focusing on those affecting trademarks.

The Law Amending the Law on Trademarks does not introduce any substantive changes, nor does it bring any changes to the trademark registration procedure. However, the amendments introduce some changes and additions to the basic law.

As the basic law did not include provisions on the reinstatement or restoration of rights, until recently parties relied on the provisions of the Law on Administrative Procedure as lex generalis. However, this law did not provide a subjective deadline within which a party could request the reinstatement of its rights; it only said that the request for restitution could be filed within a period of 10 days from the removal or elimination of any obstacles, but no later than one year from the day on which the missed deadline expired. The amendments add a new provision that includes a subjective deadline, whereby the rights holder can take action within a period of three months from the date on which it finds out that a certain right has been lost and within the objective deadline of one year.

Another change concerns the renewal of trademarks. Up until now, if the rights holder wanted to limit the list of goods/services when renewing a certain trademark, it had to file a separate request and pay an additional fee. The amendments make it possible to limit the list by filing only a renewal request.

The amendments also introduce changes to the provisions relating to the available remedies in case of trademark infringement. The Law on Contested Procedure already covered most of the issues introduced by the amendments. However, an important change is that, in addition to requesting the removal, confiscation and destruction of infringing goods, the plaintiff can now request the removal, confiscation and destruction of the materials and tools used in the production of these goods.

Kujtesa Nezaj-Shehu, SDP KOSOVE, Pristina