Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks is the Law on Trademarks, as well as Law No. 04/L-26/2011 and Law No. 05/L-040/2015 Amending and Supplementing the Law on Trademarks.

International law

Which international trademark agreements has your jurisdiction signed?

None, but Kosovo uses the Nice Classification under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Regulators

Which government bodies regulate trademark law?

The Intellectual Property Agency and the Ministry of Trade and Industry.

Registration and use

Ownership of marks

Who may apply for registration?

Article 4 of the Law on Trademarks provides that both local and foreign persons may register trademarks in Kosovo. However, where the applicant is not a national of Kosovo or does not have a registered business seat in Kosovo, such person must apply through authorised representatives. The trademark right is acquired through registration of the trademark in the trademark register maintained by the Intellectual Property Agency.

Scope of trademark

What may and may not be protected and registered as a trademark?

Any sign can be registered as a trademark if:

  • it can be represented graphically, in particular words - including personal names - designs, letters, numbers, the shape of goods or their packing, colours, as well as combinations of all the above; and
  • it can distinguish the goods or services of one enterprise from those of other enterprises.
Unregistered trademarks

Can trademark rights be established without registration?

Trademarks in Kosovo must be registered in order to gain protection; the law is silent on unregistered trademarks. However, it is possible to file opposition and invalidation actions based on well-known marks. Well-known marks enjoy protection under article 34 of the Law on Trademarks. Even though Kosovo is not a signatory of any international agreement, it applies some of the standards established in international treaties.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Foreign trademark registrations are not recognised in Kosovo; only marks registered in Kosovo are recognised in Kosovo. However, protection can be requested on the basis of a well-known mark. The well-known status should be proven (ie, the evidences showing extended use of such a mark within long period in Kosovo must be submitted to the Kosovo Patent and Trademark Office (PTO)). Therefore, no well-known status would be recognised for the marks that are not used in Kosovo.

The benefits of registration

What are the benefits of registration?

Registered trademark application could serve as a base for legal action for trademark infringement. In addition to preventing third parties to use a registered trademark without authorisation, registered marks serve as a base for broader infringement mechanisms. Kosovo is facing large numbers of trademark infringements and bad-faith filings. Registered trademark could also prevent bad-faith filing, resulting in trademark registration.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

An application for trademark registration must contain:

  • a trademark registration request;
  • the applicant's personal identification information;
  • the list of the goods or services for which registration is sought; and
  • a trademark outlook.

The application will be subject to the payment of an application fee set by subordinate legislation.

A trademark application must meet further formal requirements.

The sign for which registration is sought must be represented graphically in black and white, and in colour where protection for a specific colour is also sought.

Electronic filing is not available. A search is not required before filing; however, it is recommended. A manual search through official bulletins of published trademarks and trademark application is available. An official search is available; however, it is unreliable and thus rarely used. A €10 official fee applies.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The registration procedure lasts approximately nine to 12 months. Filing of the opposition against the trademark application would significantly increase the time and costs; namely, the time could be extended for several additional years. The official fees for trademark registration amount to €40. Registration formally comes into effect on the date of registration (ie, the date of issuance of the decision on grant).

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The PTO uses the eleventh edition of the Nice Classification.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The PTO examines only absolute reasons for refusal. Relative grounds for refusal are examined upon the oppositions filed. Letters of consent are acceptable during the opposition procedure. Objections of the Office regarding the absolute grounds and oppositions may be responded to by the applicants.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Kosovo is a first-to-file jurisdiction. No proof of use is required at the time of filing for registration. The trademark owner is obliged to start using its trademark within five years as from the trademark registration date or the date of last use, otherwise risk cancellation of its trademark based upon non-use.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking is not mandatory; however, the trademark owners are allowed to use the ® or ™ symbols. The benefits are seen in informing third parties about the existence of registered trademark rights. Risks exist only if the mentioned symbols are used on non-registered marks.

Appealing a denied application

Is there an appeal process if the application is denied?

Rejected applications can be appealed. The appeal shall be submitted to the Commission for Review at the Ministry of Trade and Industry.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Yes. An opposition notice must be submitted to the PTO within three months of the date of publication of the trademark application.

Upon opposition submitted by the holder of an earlier trademark, the trademark submitted shall not be registered if:

i. it is identical with an earlier trademark and goods or services for which the trademark has been submitted are identical with the goods or services protected by the earlier trademark;

ii. it is identity or similar to earlier trademark and goods or services which have been submitted are similar to goods and services protected by earlier trademark and when owing to similarity there is possibility causing confusion to public, including the possibility of association to the earlier trademark;

iii. 'earlier trademark' in the meaning of paragraph 1 of this article, means:

  • registered trademark with the application date or earlier priority date;
  • application for registration of trademark, with application date or earlier priority date, in the registration process;
  • a trademark, which on the application date for registration or on the priority date, is well known in Kosovo; or
  • community trademark or application for registration of community trademark, as determined by paragraph 1 of article 83 of this Law; and

iv. they are registered trademarks according to international agreements that have effect in Kosovo.

Article 83 postpones entry into force of the fourth point at 3 until Kosovo's entry into the European Union.

The official fee for filing the opposition amounts to €100.

Invalidation action could be filed against registered trademark. Invalidation action could be filed against the trademark filed in bad faith.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A registered trademark remains in force for 10 years as from the application date. No proof of use is required for maintenance of the trademark. A trademark can be extended an indefinite number of times for an additional ten-year-period each time.

Surrender

What is the procedure for surrendering a trademark registration?

A trademark may be surrendered in respect of some or all of the goods or services for which it is registered. The surrender shall be declared to the Intellectual Property Agency in writing by the trademark holder, and shall be entered in the trademark register and published in the PTO’s Official Bulletin.

The trademark will cease to have effect from the date of receipt of the declaration of surrender by the PTO.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

To date there is no regulation in this field.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Yes, the appropriate request followed by the licence agreement must be submitted to the PTO. A recorded licence gives a licensor certain rights, such as the right to file an infringement action (limited to an exclusive licensee only). Licence agreements should include the information about the type of licence, territory, duration of the agreement, subject matter, but also the information about the conditions for premature termination of the agreement. The later should include the conditions for premature termination such as breach of quality control clauses or similar.

Assignment

What can be assigned?

Trademark with or without goodwill is the subject matter of the assignment. Assignment could be partial (ie, it could refer to certain goods only). Other business assets do not need to be assigned in order to make a valid transaction.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

A notarised assignment document and signed and stamped power of attorney on behalf of the assignor and the assignee are required. In case the companies do not poses a stamp, notarisation of the powers of attorney is needed. Recordal of assignment procedure is held by the PTO. All documents should be submitted at the time of claiming recordal of assignment in order to speed up the procedure.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

No, however, the non-recorded assignment document has an effect inter partes, while recorded assignment has an effect erga omnes. Therefore, to avoid proving the assignment by other means, it is recommendable to record it with the PTO.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Not applicable.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

The following parties may file a civil infringement action:

  • the rights holder;
  • any person authorised by the rights holder pursuant to the general provisions on representation; and
  • the holder of an exclusive trademark licence, on the basis of the licensing contract.

These parties may lodge a claim against any person that has infringed their trademark, seeking:

  • verification of the mark infringement;
  • termination of the infringement; and
  • prohibition of further infringement of the rights.

There are no specialised IP courts.

Criminal and administrative procedures are available under the Criminal Code and the Law on Administrative Conflict.

Procedural format and timing

What is the format of the infringement proceeding?

The infringement proceedings are initiated by a law suit filed with the court. Both parties can suggest hiring the experts, suggest testimonies and propose as much evidences as possible. The judge decides the case. Usually, more than three hearings are held. The first instance proceedings could last more than a year. A preliminary injunction, if claimed, is decided within a few months.

Criminal enforcement proceedings are quite rare and there is still case law that would help determine the duration of the same and frequency of the motion exchange and oral hearings scheduled.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof rests with both parties. Namely, the claims of one party should be proven by such a party, with the exception of a negative claim. In the later case, the burden of proof is on the opposite party.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

The following parties may file a civil infringement action:

  • the rights holder;
  • any person authorised by the rights holder pursuant to the general provisions on representation; and
  • the holder of an exclusive trademark licence, on the basis of the licensing contract.
Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Once a trademark is registered, the rights holder can apply for customs protection. Foreign activities could have an effect to domestic customs proceedings only if they are reported to customs office. In case of regional cooperation with neighbouring customs offices, the domestic customs office can take into account the information received through such channels.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

The holder of a trademark who has initiated civil proceedings for the protection of the trademark in the case of infringement may claim from the competent authority the provision of information on the origin and distribution channels of the goods infringing his or her trademark. The court decides whether to accept such claim bearing in mind usefulness, costs and difficulties involved in procuring such evidence.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

First instance proceedings can last more than a year. A preliminary injunction should be decided within a few months. Second instance proceedings (upon appeal) could last up to two years.

Limitation period

What is the limitation period for filing an infringement action?

Kosovan Trademark Law provides no time limits in this respect.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The costs of the first instance proceedings would amount to approximately €3,000 to €4,000. The losing party should reimburse the costs to the succeeding party; however, the full costs of the proceedings are not always awarded.

Appeals

What avenues of appeal are available?

It is possible to appeal the first-instance decision. The timeline to pass the second-instance decision is up to two years. The Law on Civil Procedure applies. The appeal is to be filed with the Supreme Court.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Alleged infringers can defend themselves in infringement proceedings by claiming that:

  • they are using their own trade name, acquired conscientiously before the priority date of the plaintiff’s trademark;
  • the plaintiff’s trademark rights are exhausted;
  • they are using their own name or address in the course of trade in accordance with good business practices;
  • they are using the sign as an indication of the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services, or, where the sign is a registered trademark, as a necessity to indicate the intended purpose of the goods or services, in particular where spare parts or accessories are concerned;
  • they are using their own registered mark;
  • there has been continued use or prior use of the mark in good faith and without opposition from the title holder - in other words, the statute of limitations has expired;
  • the marks are dissimilar and there is no likelihood of confusion; or
  • the goods or services in relation to which they are using the mark are dissimilar to those covered by the plaintiff’s trademark, unless the plaintiff’s trademark is well known.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The following injunctive reliefs are available:

  • ordering the supposed infringer to cease or desist from, the acts infringing a trademark; the court may also issue such order against an intermediary whose services are being used by a third party to infringe a trademark; and
  • ordering the seizure or removal from the market of the goods unlawfully designated by a trademark.

The duration of the injunctive reliefs under the above points lasts until issuance of the decision on the main action.

The following preliminary measures could be claimed too:

  • preparation of a detailed description of the goods made likely to infringe a trademark, with or without taking of samples;
  • seizure of the goods that are proved to infringe a trademark;
  • seizure of the materials and implements used in the production and distribution of the goods that infringe a trademark and the documentation relating thereto.

Remedies are available. Punitive damages are allowed under the Law on Trademarks; where the trademark has been used in conflict with the provisions of the Law on Trademarks, the Criminal Code will also apply.

The respective punitive provisions to article 111 of the Law on Trademarks are as follows:

A legal person who, without authorisation, uses a trademark contrary to article 8 of this law shall be punished for the misdemeanour by a fine amounting from €5,000 to €15,000; a natural person who acts contrary to article 8 of this law shall be punished for the misdemeanour, by a fine amounting from €500 to €1,500; a responsible person is a legal person who acts contrary to article 8 of this law shall be punished for the misdemeanour by a fine amounting from €500 to €1,500; a natural person - a craftsman or other self-employed person, who acts contrary to article 8 of this law, shall be punished for the misdemeanour, by a fine amounting from €2,500 to €7,500 where the misdemeanour has been committed in the performance of his or her activities; the products intended for or used for the commitment of misdemeanours referred to in this article upon the final decision of a competent court shall be seized and, shall be destroyed, made unrecognisable or used in any other way; and in all cases when the trademark has been used in conflict to the provisions of this law, depending on the alleged infringement, the provisions of this law and the Kosovo Penal Code shall be applied.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Not applicable.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

None.