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.