On July 28, 2022 new Law on Trademarks entered into force in Kosovo. The main purpose of this change was harmonization of Kosovo local legislation with the Directive 2004/48/EC on the enforcement of intellectual property rights. New law introduced several significant changes in trademark protection in Kosovo which will have important impact on trademark’s owner position.
The changes could be divided in two groups: first one is related to trademark application procedure, while the second is referring to trademark enforcement.
Changes in trademark application procedure:
1. Graphical representation of trademark is not required any more
It is now envisaged that a trademark can be any mark that:
- can distinguish the goods or services of one trademark owner from those of another, as well as
- it is represented in register in such a way to enable the competent authorities and the public to define the object of protection clearly and precisely.
2. List of goods and services have to be clearly specified
It is not admissible any more to apply only for class headings in list of goods and services, but it is mandatory now to specify goods and services the protection is sought for.
3. Absolute grounds for refusal or invalidity
The list of absolute grounds for refusal or invalidity is now extended to include registered designations of origin or geographical indications. Protected traditional wine expressions and protected plant varieties will also be considered as an obstacle for registration of a new trademark for the same goods and services.
4. Relative grounds for refusal
The novelty is the introduction of bad faith as relative ground for refusal or invalidity of a trademark. Registration of a trademark can be refused, or registered trademark can be declared invalid in case that the trademark owner/applicant applied for a trademark in bad faith.
4. Restoration of rights
This remedy is now clearly prescribed by the Law on trademarks. It should provide the last chance for the Applicant to take necessary actions to avoid loss of rights.
Changes related to trademark protection:
1. Citation of trademarks in the dictionary
The trademark holder is now entitled to request from the publisher of a dictionary, encyclopaedia, or similar material to make a reference in the next edition indicating that the trademark used in a text is a registered trademark. This should protect the trademark from dilution that could happen, once the public starts identifying trademark with generic name of the goods or services for which the same is registered.
2. Extensions of rights acquired by a trademark
Exclusive right of trademark owner is extended by adding few more situations when such is entitled to prohibit use of its trademark:
- when it is used as a trade name of the economic entity or part of the trade name;
- when third parties importing goods in Kosovo, when such goods, including their packaging, come from the countries in which the right of trademark owner has not been exhausted;
- in preparatory actions in connection to the use of packaging and other means that may cause violation of rights (affixing a mark identical to or similar with the trademark on the packaging, or their importation, offering, placing on market of storing for those purposes).
3. Hybrid principle of exhaustion of rights
The most significant change that will have an impact on future economic environment in Kosovo and scope of powers of trademark owners is the introduction of broad exceptions of principle of national exhaustion of trademark rights It is now envisaged that a trademark owner cannot prohibit the use of his trademark in relation to the products he had placed in:
- any member state of the European Union;
- any member state of the European Economic Area;
- any state of the Western Balkans region;
- any state with which Kosovo has a free trade agreement or trade facilities.
This amendment triggers controversies as:
(i.) it has not been subject of proper public discussions in professional community prior to its enactment; further amendments may be possible in the near future;
(ii.) the exceptions of the principle of national exhaustion of trademark rights are envisaged too broadly, in the sense that the principle of national exhaustion is only de iure proclaimed, but de facto these exceptions introduce the principle of international exhaustion of trademark rights; and
(iii.) this solution is not in line with EU Directive.