Courts show willingness to follow ECJ's criteria in trademark cases

In two recent decisions issued by the Administrative Appeal Court of Tirana and the First Instance Court of Tirana, both courts have found the criteria established by the Court of Justice of the European Union (ECJ) to be an important source for Albanian trademark practice. Although the courts ruled in different proceedings - a trademark opposition which ended up before the Administrative Appeal Court of Tirana, and a cancellation action based on prior rights initiated directly before the First Instance Court of Tirana - in terms of substantive law, they both addressed IP-related issues that are rarely deliberated on by Albanian courts.

One of the issues that the courts raised was the criterion for determining what constitutes a well-known mark and whether the opposing marks were well known in Albania. Both petitioners claimed that their trademark was well known and submitted evidence of use and advertising expenses dating back 20 years. The evidence was found to be sufficient to establish the well-known status of the marks. According to both courts, a trademark used for more than 10 years in a market is eligible to be considered as well known. Further, despite any shortcomings in the courts’ reasoning, both courts explicitly referred to WIPO’s Recommendations Concerning Provisions on the Protection of Well-Known Marks of September 1999, considering it as the main guidance in assessing whether a mark is well known.

Another issue that was thoroughly discussed before both courts related to the comparison between word and device marks. According to both courts, when signs consist of both verbal and figurative components, in principle the verbal component of the sign has a stronger impact on consumers than the figurative component, unless the figurative element is visually striking. This is a new development in Albanian trademark practice, which is in line with EU case law.

Further, the question of whether unfair competition constitutes another (broader) legal ground that may be used against trademark infringement was answered positively by the First Instance Court of Tirana. Besides a claim of likelihood of confusion, the plaintiff in this case based its claim on the unfair competition provisions, arguing that there were similarities between the marks, as well as similarities between the packaging of the products. After analysing the packaging of the parties' products, the court ruled that the similarities (eg, the size and shape) could be taken into account when deciding an unfair competition claim, and therefore satisfied the plaintiff’s claim. It is another interesting ruling, taking into account the lack of case law relating to unfair competition in Albania.

Even more importantly, all authorities in charge of examining these particular cases followed the ECJ's criteria, acknowledging them as an important source for Albanian trademark practice. This approach is a remarkable step forward for Albanian court practice, since, until now, the courts have considered the likelihood of confusion entirely on the basis of expert opinions - those experts usually being PTO examiners.

Even though these decisions of the First Instance and Appellate Court are not binding on other courts, they are significant as they pave the way for further consideration of the importance of the ECJ's rulings by the Albanian Supreme Court.

The decisions can be appealed before the Appellate Court of Tirana and the Supreme Court of Tirana, respectively.

Irma Cami, PETOŠEVIĆ, Tirana