On October 2, 2014, the First Instance Court of Tirana (FICT) issued a decision on trademark revocation on grounds of non-use, based only on the Albanian Patent and Trademark Office (ALPTO) and the General Directorate of Customs (GDC) official statements, as opposed to the evidence that could have been presented by the plaintiff or the proof of use by the defendant.
The case was brought to FICT by the leading Bulgarian cosmetics maker Rubella Beauty AD against the Liechtenstein cosmetics company VVPP Investment Anstalt AG and its three international trademark registrations designating Albania.
On February 7, 2013, Rubella Beauty AD filed with ALPTO the application for registration of ALEN MAK trademark (plain block letters) in Class 3 of the Nice Classification. At the time, three international registrations bearing the same mark, owned by the defendant, had already been registered, with Albania as a designated country (No. 700484; No. 819784; and No. 949638, all stylized word marks).
According to the Albanian Law on Industrial Property (Article 159 – Obligation to Use the Mark), a registered trademark should be used for a continuous period of five years from the registration date, unless there are proper reasons for non-use, independent of the will of the trademark owner.
The use of the mark also means its use “in packaging, catalogues, brochures, manuals, advertisements, the media of communication and electronic commerce or audio-visual media, provided that it is perceived by the public as relating to the offering or providing of goods or services designated by the mark in the Republic of Albania.”
The use of the mark also means:
- its use by a licensee or another person when this is permitted by its owner, or by any person who has authority to use a collective mark;
- its use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered;
- affixing of the mark to goods or to the packaging thereof in the Republic of Albania solely for export purposes.
Proving the above was not possible as the defendant was absent from all court hearings and so was ALTPO, which was a designated third party.
Therefore, the plaintiff submitted official statements released by ALPTO and GDC, as indirect evidence to support his claim. Specifically, GDC stated that no single product bearing the defendant’s trademarks had ever entered the Albanian territory. Additionally, ALTPO confirmed that no license agreement had ever been registered for these trademarks, which meant that no Albanian company had the legal right to use and distribute such trademarks in the Albanian market. Therefore, FICT found that the international registrations had not been used for more than five years each.
According to the Albanian Civil Procedure Code, the burden of proof in a civil hearing usually rests on the plaintiff. Nonetheless, in this case, as the plaintiff could not prove the non-use and the defendant did not attend the hearings, the Court accepted the official statements of the third parties as sufficient evidence.
No appeal has been filed against the FICT decision.
Considering that the Albanian courts are not familiar with trademark non-use issues, this ruling was a step forward and a novelty in Albanian IP-related court practice.