Patent & Trade Mark Agency MIHAILOVIC - Western Balkans
Lately, there have been two increasing trends in Kosovo:
- filing trademark applications that are identical to large brands that have not yet broken into the local market; and
- cancellations of otherwise well-known trademarks due to non-use.
Owners of reputable brands have been shocked to find that they have no measures at their disposal if another party files an identical mark to theirs. Although their mark may be well known in other countries, without an official application, it is not yet protected in Kosovo. Trademark trolls aim to sell off those trademark applications, and this is unfortunately happening more and more often.
Trolls have been successfully capitalising on the combination of the region’s socio-political position and the lethargy of IP owners when using their IP rights in Kosovo to register their marks. Although the local situation is not ideal for big investments such as building hotels or grocery chains, IP owners can nonetheless avoid problems by ensuring that their marks are not susceptible to cancellation due to non-use. This will ensure that their registrations are not cancelled; however, it is also important to keep potential opposition proceedings in mind. These enable a later rights holder to demand proof of use, which prevents the owner of the prior right from opposing any new applications.
In addition, the Kosovo Industrial Property Office and Kosovo courts are more inclined to stand behind local rights holders. With no international oversight, this often plays out badly for foreign IP owners.
Both problems can be resolved by taking stock of a brand’s core IP portfolio and foreseen expansion and export strategy, before deciding whether some of the most valuable marks that are currently not in use in Kosovo should in fact be registered again.