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Which courts are empowered to hear trademark disputes?
The Commercial Department of the Basic Court of Prishtina.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
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.
Criminal and administrative procedures are available under the Criminal Code and the Law on Administrative Conflict.
Who can file a trademark infringement action?
As discussed above, infringement actions can be filled by the rights holder or its exclusive licensee, either directly or through authorised representatives.
What is the statute of limitations for filing infringement actions?
In civil, administrative or criminal procedures, the statute of limitation is the same as for other general procedures.
What is the usual timeframe for infringement actions?
It typically takes several years.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
Upon the request of a rights holder that proves that its trademark has been infringed or is threatened to be infringed, the court may order any provisional measure, including the termination or prevention of the infringement, and order, among other things, the infringer to cease the infringing acts. The court may also issue such order against an intermediary whose services are being used by a third party to infringe a trademark. Further, the court may order the seizure or removal from the market of the goods unlawfully designated by a trademark.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
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.
What customs enforcement measures are available to halt the import or export of infringing goods?
Once a trademark is registered, the rights holder can apply for customs protection.
What defences are available to infringers?
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.
What is the appeal procedure for infringement decisions?
It is possible to appeal the first-instance decision. The time line to pass the second-instance decision is up to two years. The Law on Civil Procedure applies.
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