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.