New Trademark Law attempts to harmonise IP legislation with EU law
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The new Trademark Law came into force in Kosovo on September 8 2011. The new law is the result of Kosovo’s efforts to harmonise its legislation with EU law. Certain principles that are characteristic of the US legal system (eg, the requirement to specify in the trademark application whether the trademark is in use or is intended to be used) have been abandoned.
Under the new law, trademark protection will be granted to a mark which:
- serves to distinguish goods and services that are in commercial circulation; and
- can be represented graphically.
This includes words, personal names, devices, letters, numbers, the shape of goods or their packaging, colours and any combinations of the above.
Trademark rights arise from registration, not from use. Prior use gives certain rights to the trademark owner only if the trademark is well known in Kosovo.
The new law provides for opposition proceedings. Trademarks are examined on absolute grounds and then published in the Official Bulletin for opposition purposes. The owners of earlier registered trademarks, as well as the owners of unregistered trademarks that are well-known in Kosovo, have three months to file an opposition. An opponent need not provide evidence of use of its earlier trademark, unless the applicant so requests. If the applicant does not respond to the opposition, it is upheld automatically. Trademarks registered in bad faith cannot be challenged in opposition proceedings; the only way is to file an invalidation action. The same applies in case of conflict between a trademark and a personal name or image, copyright or other IP right.
In addition, interested parties can file observations pointing out the reasons why the application should be refused on absolute grounds.
Under the new law, the decisions of the Intellectual Property Office can be appealed to the Board of Appeals - a body which is still to be established by the Ministry of Trade and Industry. A decision of the Board of Appeals can be challenged in an administrative action before the court.
The new law provides that a trademark registration lasts for 10 years from the application date (under the former Trademark Law, the term was calculated from the registration date). Once registered, use of the trademark is mandatory. If the trademark is not used for more than five years, it can be cancelled at the request of an interested party. Cancellation is effective from the date of filing of the request for cancellation. The Intellectual Property Office (as opposed to the courts under the former law) has competence to decide trademark cancellation actions.
Trademark registration entitles the trademark owner to prohibit third parties from using:
- an identical trademark for identical goods;
- an identical or similar trademark for identical or similar goods, if there is a likelihood of confusion, including a likelihood of association; and
- an identical or similar trademark for dissimilar goods, where the earlier trademark has a reputation in Kosovo and use of the later mark in the course of trade without due cause would take unfair advantage or be detrimental to the distinctive character or repute of the earlier mark.
The new law also provides for preliminary injunctions. If the trademark owner can prove that its trademark has been infringed or is threatened to be infringed, the court may, at the trademark owner’s request, order the seizure and/or removal from the market of the infringing goods. Such a measure can be ordered ex parte. In case of infringement on a large scale for the purpose of acquiring commercial gain, and if such infringement may cause the trademark owner irreparable damage, the court may also:
- order the seizure of movable and immovable property belonging to the infringer that is not directly related to the infringement; or
- order that the infringer’s bank accounts or other assets be blocked.
Gordana Pavlovic, Cabinet Pavlovic, Brussels and Belgrade
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