Oct 02, 2023 (Newsletter Issue 10/23)
New Administrative Instruction on TM Registration
The new Administrative Instruction (AI) on Trademark Registration Procedures No. 08/2023, which entered into force on August 14, 2023, addresses the most important changes brought by the new Law on Trademarks, in force as of July 2022.
Besides elaborating the novelties introduced by the new trademark law and clarifying certain aspects of various procedures, the new AI also states that the Kosovo Intellectual Property Office (IPO) has accepted WIPO’s Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. This means that the IPO can now refuse an application for a mark that is in conflict with a well-known international trademark even if the latter is not registered in Kosovo.
Additionally, the Kosovo IPO has accepted the list of recommendations from the INTA Board Resolution on Bad Faith Trademark Applications and Registrations when assessing if an application was filed in bad faith.
Finally, according to the new AI, parties in an opposition procedure are now obliged to inform the IPO within 30 days from the date of the decision of the Complaint Committee of the Ministry of Industry, Entrepreneurship and Trade if a lawsuit against the decision has been filed with the competent Court. Otherwise, the IPO will consider the Complaint Committee’s decision as final.
Source: www.petosevic.com
Aug 11, 2022 (Newsletter Issue 11/22)New Trademark Law Entered into ForceOn July 28, 2022, a new Law on Trademarks entered into force in Kosovo, harmonizing local legislation with Directive (EU) 2015/2436 on the approximation of the laws of the Member States relating to trademarks. The new Law also provides a basis for the implementation of Directive 2004/48/EC on the enforcement of intellectual property rights.
The most significant changes are outlined below:
- No Requirement of Graphical Representation:
Graphical representation is no longer required when filing a trademark application.
- Literal Interpretation of Class Headings:
It is now required to precisely define the list of goods and services for which protection is sought.
- Additional Absolute and Relative Grounds for Refusal:
Additional absolute grounds for refusal are introduced. A sign cannot be registered if it conflicts with an existing designation of origin, geographical indication, traditional term for wine, traditional speciality guaranteed or plant variety.
In terms of relative grounds for refusal, a bad faith trademark application can now be opposed.
- Exhaustion of Rights:
Trademark owners cannot prohibit the importation of genuine goods bearing their trademarks after they have placed them on the market in any of the following markets: Kosovo, a member state of the EU or EEA or the Western Balkans region, or a state with which Kosovo has concluded a free trade or trade facilitation agreement.
- Trademark Infringement Scope Expanded:
The scope of trademark infringement has been expanded by establishing additional uses of similar or identical signs that may be prohibited by trademark owners, namely use of a sign as a company name, in advertising, on packaging, labels, tags and security or authenticity features or devices, and placing these on the market.
- Introduction of Disclaimers:
If a trademark includes an element that might not be considered distinctive, the IPO may require the applicant to impose a disclaimer on the non-distinctive element.
- The Non-Use Defense:
In court proceedings, the defendant may now request that the plaintiff show the use of the trademark claimed to have been infringed.
- Appeals with the Market Inspectorate:
It is now possible to enforce trademarks in an administrative procedure by filing an appeal with the Market Inspectorate against an infringer. The appeal procedure will be further elaborated in bylaws, which will be adopted by July 28, 2023.
- Other changes:
In connection with the enforcement of trademark rights, such as modification of the time frame for filing an appeal against an IPO decision, monetary compensation for the seizure and destruction of infringing goods.
For more information, please check here Source: www.sdpkosove.com Jun 14, 2018 (Newsletter Issue 11/18)New Law on Customs Measures Entered into ForceThe new Law on Customs Measures for Protection of Intellectual Property Rights entered into force in Kosovo on May 23, 2018, introducing important changes intended to align local customs procedures with Regulation (EU) No. 608/2013 concerning customs enforcement of IP rights.
The new law streamlines the simplified procedure for the destruction of counterfeit goods and introduces the small consignments procedure.
According to the amended simplified procedure, rights holders are no longer required to send a cease and desist letter to notify the owner of the goods about the seizure and to seek consent for destruction. Instead, Kosovo Customs will notify both the rights holder and the owner about the detention within one working day.
The rights holder as well as the owner have 10 working days to react.
For more information, please check hereSource: www.petosevic.com Mar 29, 2018 (Newsletter Issue 6/18)Online Database LaunchedOn December 27, 2017, the Kosovo Industrial Property Office (IPO) published its online trademark and patent database, allowing users to browse through patent and trademark applications and registrations. The database is available in the Albanian language only.
Although the IPO made every effort to complete the database with all existing information, the IPO highlighted that the database should only be used for guiding purposes.Source: www.petosevic.com Oct 12, 2016 (Newsletter Issue 18/16)
Administrative Instructions on Patent and TM Registration in Force
The Kosovo Ministry of Trade and Industry signed two more IP-related Administrative Instructions, which entered into force.
The first Administrative Instruction (AI) No. 13/2016, in force as of September 2, 2016, thoroughly describes the procedures such as the filing of a patent application, patent registration, publication and the recording of changes in the register.
The AI No. 14/2016, in force as of September 7, 2016, clarifies the procedures to be followed and documents to be submitted when taking actions such as filing requests to record changes or renew trademarks. It is important to note that the AI requires a Power of Attorney to be enclosed with each of these requests. The AI also introduces some new provisions, which were not covered by the previous by-law, e.g. provisions describing the procedure to be followed if an observation notice has been filed.
Source: www.petosevic.com
Sep 13, 2016 (Newsletter Issue 16/16)
Administrative Instructions Changed
Four new IP-related administrative instructions have recently entered into force in Kosovo.
The Administrative Instruction (AI) No. 08/2016, effective as of July 4, 2016, relates to the accelerated examination of trademark applications, which is still available if there has been an alleged infringement of trademark rights. When requesting such examination, the applicant must indicate the trademark filing details and submit:
- Copy of the trademark application as filed;
- Arguments proving the alleged trademark infringement; and
- Proof of payment of the official fee per trademark in the amount of EUR 120.
Previously, the applicant also had to submit the proof that a civil or a customs action had been initiated.
The accelerated examination request may be submitted at any time after the filing date, as no time frame is specified. The IP Agency will decide on the request within 15 days from the filing date of the request.
The second Administrative Instructions, No. 10/2016, effective as of August 2, 2016, introduces a single fee system and amends certain official fees.
Previously, the Kosovo IPO provided two different schedules of fees, one for legal entities and one for natural persons. The new AI provides for a single fee schedule for both categories of applicants.
Certain official fees have increased significantly. For instance, the fee for filing oppositions has doubled, from EUR 50 to EUR 100, while the fee for invalidation actions increased from EUR 50 to EUR 200.
The third Administrative Instructions, No. 11/2016, effective as of August 12, 2016, was approved following the entry into force of the new law on geographical indications and designations of origin, in January 2016.
Finally, the fourth Administrative Instructions, No. 12/2016, on the industrial design registration procedure entered into force on August 22, 2016, providing detailed information on the procedures prescribed by the new law on industrial design, in force as of January 2016.
These two Administrative Instructions thoroughly describe the procedures such as application, registration, publication, recordal of changes, renewal and termination of validity for GI(s) and industrial designs.
The new Administrative Instructions on trademark and patent registration procedures are expected to enter into force soon.
Source: www.petosevic.com
Jun 28, 2016 (Newsletter Issue 12/16)
Original or Notarized PoA Required
As of June 8, 2016, the Kosovo IPO does not accept any action if not accompanied by an original Power of Attorney (PoA) form. Alternatively, a notarized copy of the original is acceptable. Kosovo notary public will only certify a copy if the original is notarized in the country of origin. Therefore, we recommend that each PoA sent, as of now on, is notarized.
This change applies to all filings before the Kosovo IPO, such as new applications, renewals, responses to office actions, oppositions, recordals, or any other action before the IPO.
Therefore, scanned copies of PoAs will not suffice to meet any deadline or obtain a filing date.
The new practice was adopted without any prior notification other than an email announcement that the local IP agents received on June 8, 2016 from the IPO.
Source: www.petosevic.com
Jun 10, 2014 (Newsletter Issue 9/14)Trademark Law Soon AmendedKosovo has recently drafted amendments to its trademark and patent laws, which the Kosovo Parliament is expected to adopt this year.
The amendments aim to bring Kosovo’s IP legislation in line with European Union’s directives, as one of the requirements for EU integration, as well as create a better and safer environment for investments and the protection of IP rights.
The draft amendments are available in Albanian, Serbian and English at the Kosovo Ministry of Trade and Industry’s website.
Source: www.petosevic.com Sep 03, 2013 (Newsletter Issue 12/13)
New GI Law in Force
The new Law on Geographical Indications (GIs) and Designations of Origin (DOs) entered into force in Kosovo on July 19, 2013.
According to the new law, GIs can be registered at Kosovo’s IPO. Any GI in the name of a region, a specific place or in special cases the name of a state, which is used to describe a specific product originating from that region or state can be registered.
Registered GIs or DOs will be protected against any direct or indirect commercial use of products that are not registered, any misuse, imitation or infringement, each inaccurate (false) or misleading indication in terms of genealogy, origin, nature or essential qualities of the product, and every other practice or action that may mislead the consumer as to the true origin of the product.
Legal protection of GIs and DOs as foreseen by the new law covers several actions, including the procedure of finding and stopping the infringement, the application for the seizure and destruction of products, and the application for damage compensation. Moreover, the law includes penalty provisions including monetary fines in various amounts depending on different categories.
Source: SDP KOSOVE, Kosovo
Mar 06, 2012 (Newsletter Issue 4/12)National TM Applications Published for OppositionOn January 17, the Kosovo Intellectual Property Office (IPO) issued its seventh Official Bulletin, the first one to include national trademark applications published for opposition, under the provisions of the new trademark law of September 2011.
This Bulletin also includes the Serbian trademarks re-filed in Kosovo.
The previous six Bulletins included the Serbian trademark re-registrations only.
Apart from the Serbian re-registrations, during the one-year revalidation period that started on November 19, 2007, when the Kosovo IPO opened, it was also possible to re-file the pending Serbian trademarks. These trademarks will be treated in the same manner as the national trademark applications, while the Serbian priority will be kept. Thus, these trademarks will also be subject to opposition.
An opposition notice may be filed with the Kosovo IPO within a period of three months as of the publication date.
To access the seventh Official Bulletin, please click here
Source: SDP KOSOVE, Kosovo Feb 07, 2012 (Newsletter Issue 2/12)
Accelerated Examination of TM Applications
The Administrative Instruction explains the procedure and the grounds for requesting the accelerated examination which was introduced by Kosovo’s new Law on Trademarks. The Ministry of Trade and Industry (MTI) approved the Administrative Instruction on January 12, 2012 and entered into force on the same date.
The accelerated examination is only available if there has been an alleged infringement of trademark rights. When requesting such examination, the applicant must indicate the trademark filing details and submit:
- Copy of the trademark application as filed;
- Documents evidencing that a civil or a customs action was duly initiated;
- Documents evidencing trademark rights and the alleged infringement of such rights;
- Proof of payment of the official EUR 50 (USD 63) fee per trademark, regardless of the number of classes.
The accelerated examination request may be submitted at any time after the filing date, as no time frame is specified. The IPO will decide to grant or reject the accelerated examination request within 15 days from the filing date. The examination is to be performed under the provisions of the Law on Trademarks.
Source: SDP KOSOVE, Kosovo
Sep 01, 2011 (Newsletter Issue 10/11)
New Trademark Law
The Kosovo Assembly approved the new Trademark Law which enters into force on September 8th, 2011. Main changes are:
- Trademark rights are acquired through registration only.
- Trademark holders do not need to declare the use or the intent to use the mark at the time the application is filed.
- An observation can be filded within three months from the publication of the application in the Official Gazette.
- Appeals of IPO’s decisions can now be filed within 15 days of the receipt of the decision.
- An accelerated examination of a trademark application can be requested.
- The owner of a well-known trademark may not oppose an application or revoke a trademark registration unless the proprietor also owns a pending application or registration with the Kosovo IPO.
- Relative grounds for refusal: Goods and/or services will need to be similar even in case the earlier trademark has a reputation in the Republic of Kosovo and the use of the trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or reputation of the earlier trademark.
- No invitations to renew trademarks.
Source: Petosevic
Apr 27, 2011 (Newsletter Issue 7/11)Second IP Gazette LaunchedOn April 12th, 2011, the Kosovo Intellectual Property Office issued its second Official Gazette, listing patent applications, registered patents, registered trademarks, as well as renewed trademarks.
The Gazette is available in Albanian only and can be downloaded here
Source: Petosevic, Kosovo Feb 01, 2011 (Newsletter Issue 2/11)First IP Gazette LaunchedThe Kosovo Intellectual Property Office launched its first Official Gazette, which contains information on all registered patents and trademarks as well as renewed trademarks on December 9th, 2010.
The Gazette is only available in the Albanian language and can be downloaded here Source: www.petosevic.com Sep 15, 2010 (Newsletter Issue 14/10)
New Trademark Law Approved
On September 8th, 2010, the Kosovo parliament approved the new Law on Trademarks which will replace the 2006 Law No. 2006/02-L54.
The new law needs to be promulgated by the President of the Republic to enter into force. This is expected in the near future.
Source: www.petosevic.com
Legal basis is the Law on Trademarks, No. 08/L-075, in force since July 28, 2022.
The Kosovo Trademark Law largely builds on the EU trademark law directive and satisfies all international standards related thereto.
Trademark rights are acquired through registration. Trademark holders do not need to declare the use or the intent to use the mark at the time the application is filed.
Kosovo is not part of the Madrid Agreement or Protocol.
Starting from November 19, 2007, it has been possible to file new applications directly to IP Office in Kosovo. All trademarks, patent and designs applied to the PTO in Belgrade, but not registered until November 19, 2007 had to be re-filed in Kosovo. Such re-filed applications will maintain the priority date of the application filed in Yugoslavia/Serbia.
Nice classification, 12th edition
Registrable as a trademark are any signs, particularly words, including personal names, designs, letters, numerals, audio marks, three-dimensional configurations, including the shape of goods or their wrapping or other packaging, including colours, or combinations of colours, that are capable of distinguishing the goods or services of one undertaking from those of other undertakings may be protected as trademarks.
The following trademark types are registrable in Kosovo: trademarks, service marks, collective marks, and certification marks.
Graphical representation is no longer required when filing a trademark application.
The application is filed at the Kosovo IP Office (IPO).
A multi-class application is allowed.
The list of goods and services for which protection is sought must be precisely defined to enable the competent authorities to determine the extent of the protection sought on that sole basis.
Foreign applicants need a local agent in order to file an application.
Power of Attorney needs to be in original and notarized if company stamp is not available.
The IP Office will examine applications on absolute grounds (e.g. distinctiveness, conflicts with other IP rights and etc.).
An accelerated examination of a trademark application can be requested. This is only available if there has been an alleged infringement of trademark rights. The following documents need to be submitted:
- Copy of the trademark application as filed;
- Documents evidencing that a civil or a customs action was duly initiated;
- Documents evidencing trademark rights and the alleged infringement of such rights;
- Proof of payment per trademark, regardless of the number of classes.
The accelerated examination request may be submitted at any time after the filing date, as no time frame is specified.
Cancellation, invalidation and revocation actions are only possible before the IPO.
National:
The opposition period is 3 months from the date of publication of the trademark application in the Official Bulletin.
Bad faith trademark applications can now be opposed.
A trademark registration is valid for 10 years from the date of application and it may be renewed for indefinite further periods of 10 years each.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a new trademark application in up to three classes is EUR 40, each additional class is EUR 5.
Registration fee and issuance of the registration certificate, up to three classes is EUR 50, each additional class is EUR 10.
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Sep 09, 2024
CWB, Pristina, Kosovo