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What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation governing trademarks is the Law on Trademarks, as well as Law 04/L-26/2011 and Law 05/L-040/2015 Amending and Supplementing the Law on Trademarks.
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.
Which government bodies regulate trademark law?
The Intellectual Property Agency and the Ministry of Trade and Industry.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
What legal protections are available to unregistered trademarks?
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.
How are rights in unregistered marks established?
Are any special rights and protections afforded to owners of well-known and famous marks?
Owners of well-known and famous marks may file opposition and invalidation actions against third-party trademark applications and registrations. The Law on Trademarks provides that a sign shall not be registered as a trademark if it is identical or similar to an earlier trademark and registration is sought for goods and services that are similar to the goods and services for which the earlier mark is registered if:
- the earlier trademark has a reputation in Kosovo; and
- the use of the later trademark, without reasonable cause, would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier trademark.
The burden of proving that the mark that is the basis of the action is well known rests with the owner.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademarks 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 as described above.
What legal rights and protections are accorded to registered trademarks?
The holder of a trademark registration has the right to use the mark in relation to the goods and services for which the mark is registered. The registered trademark is the exclusive right of its holder (Article 8 of the Law on Trademarks). The holder of a trademark registration is entitled to prevent third parties from using, without its permission:
- any sign that is identical to the trademark in relation to goods or services that are identical to those for which the trademark is registered;
- any sign where, because of its identity or similarity to the trademark and identity or similarity of the goods or services covered by the trademark and the sign, there exists a likelihood of confusion on the part of the public – including the likelihood of association between the sign and the trademark; and
- any sign that is identical or similar to the trademark in relation to goods or services that are not similar to those for which the trademark is registered, where the latter has a reputation in Kosovo and where use of that sign, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trademark.
Article 8(1) provides that the holder of a trademark may prohibit the following actions in the cases described above:
- affixing the sign to the goods or to the packaging thereof;
- offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
- importing or exporting the goods under the sign; and
- using the sign on business papers and in advertising.
Lastly, the rights conferred by a trademark registration will prevail against third parties from the date of publication of the registration. However, reasonable compensation may be claimed in respect of acts occurring after the date of publication of a trademark application where such acts would, after publication of the registration of the trademark, be prohibited by virtue of that publication. The court ruling on the case may not decide on the merits of the case until the registration has been published.
Who may register trademarks?
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.
What marks are registrable (including any non-traditional marks)?
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 above; and
- it can distinguish the goods or services of one enterprise from those of other enterprises.
Can a mark acquire distinctiveness through use?
A mark can acquire distinctiveness through use, but evidence of such use will need to be provided.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
A mark may be refused registration on absolute and relative grounds, according to Articles 6 and 7 of the Law on Trademarks.
Are collective and certification marks registrable? If so, under what conditions?
Collective and certification marks can be registered in Kosovo. An applicant for a collective or certification mark must submit to the Intellectual Property Agency the contract governing the rules of use of the mark at the same time of filing its application to register a collective or certification mark. Associations of manufacturers, producers, suppliers of services, or traders may apply for registration of a collective mark according to the legislation in force and have the right in their own name to sign contracts and undertake legal acts, and to sue and be sued as any other legal person. Any sign within the meaning of Article 5 of the Law on Trademarks that is intended to designate the quality, origin, manner of production or other common characteristics of the goods or services may be protected as a certification mark.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
An agent filing an application a trademark behalf of the mark owner must file a power of attorney, which must be either notarised or (at least) stamped with the mark owner’s company stamp.
What information and documentation must be submitted in a trademark registration application?
An application for the registration of trademark must contain:
- a trademark registration request;
- the applicant 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 set out in Article [ ](1) of [ ] and subordinate legislation.
What rules govern the representation of the mark in the application?
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.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
€40 for up to three classes and €5 per additional class.
How are priority rights claimed?
An applicant or its successor in title that has duly filed a trademark application in or designating any state that is a party to the Paris Convention or the World Trade Organisation may, for the purpose of filing an application in Kosovo for the same trademark in respect of goods or services that are identical to or contained within those for which it has already filed an application, invoke the right of priority of the first filing, provided that it files the application in Kosovo within six months of the date of filing of the first application.
The applicant invoking the right of priority must indicate in the Kosovo application the relevant information concerning the first application (ie, state, date and application number) and must submit a true copy of the first application no later than three months from the date of filing the application to the Intellectual Property Agency.
Failure to meet the requirements above will result in the priority right being lost.
Every filing that is equivalent to a regular national filing under the national law of the state where it was made or under bilateral or multilateral agreements shall be recognised as giving rise to a right of priority. ‘Regular national filing’ means any filing that is sufficient to establish the date on which the application was filed, whatever may be the outcome of the application.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
They are available by law, but are unreliable and thus hardly used. A €10 fee applies. However, as trademark applications and registration are published in the Official Bulletin, which is available, manual search of published rights are possible.
What factors does the authority consider in its examination of the application?
The Intellectual Property Agency examines whether:
- the application satisfies the requirements concerning a date of filing set out in Article 24(1) of the Law on Trademarks;
- the application meets the requirements of Articles 5 and 23(2), as well as other requirements defined by subordinate legislation to the Law on Trademarks; and
- the application fee, as set by subordinate legislation for trademark registrations, has been paid.
If the application does not meet the requirements mentioned in Paragraph 1 of this article, the Intellectual Property Agency will invite the applicant to add the missing information within 60 days.
Upon the applicant’s request, the timeframe to submit any missing information may be extended by a maximum of 30 days, counting from the date when the first period expires.
If the deficiencies or failure to pay the application fee are not corrected within the set time limit, the application will be dismissed. If the applicant complies with the Intellectual Property Agency’s request, the office shall grant, as the date of filing, the date on which the deficiencies or the default on payment are remedied.
If the deficiencies are not remedied according to the office’s request or if they are not remedied within the set time limit, the agency will reject the application.
The agency examines trademark applications in chronological order, except where the applicant requests an early examination.
An implementing act governs the form, procedures and conditions for early examination.
Does the authority check for relative grounds for refusal (eg, through searches)?
The Intellectual Property Agency examines the application. When the application contains an element that is not distinctive, and such element could give rise to doubts as to the scope of protection of the mark, the office might request, as a condition to registration, that the applicant disclaim any exclusive right to such element.
Further, the office may reject an application on any absolute grounds for refusal.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
The applicant has the right, within 60 days of receiving the written notification of the reasons for rejection of some or all the goods or services mentioned in the application, to submit its remarks and request that the application be amended, or submit new facts that may influence the final decision of the Intellectual Property Agency.
Can rejected applications be appealed? If so, what procedures apply?
Rejected applications can be appealed. The appeal shall be submitted to the Commission for Review at the Ministry of Trade and Industry.
When does a trademark registration formally come into effect?
A trademark registration formally comes into effect on the date the Intellectual Property Agency issues its decision regarding registration. However, owners’ rights can be exercised as from the filing date.
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years. Registration can be renewed an indefinite number of times for 10 years each time, provided that the trademark rights holder files a request for renewal at least six months before the registration expires and pays the fee as set in the Law on Trademarks.
What registration fees apply?
€80 for renewal up to three classes and €10 for each additional class.
What is the usual timeframe from filing to registration?
Approximately one year.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes. An opposition notice must be submitted to the Intellectual Property Agency within three months of the date of publication of the trademark application. Where the agency finds that the opposition is grounded, the trademark may not be registered (Article 7, paragraph 1). Upon opposition submitted by the holder of an earlier trademark, the trademark submitted shall not be registered if:
Art. 7, paragraph 1, sub paragraph 1, 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 earliertrademark;
Art. 7, paragraph 1, sub paragraph 2, 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 due to similarity there is possibility causing confusion to public, including the possibility of association to earlier trademark;
Art.7, paragraph 2 “Earlier trade mark" in the meaning of paragraph 1 of this Article, means:
Art 7, paragraph 2, sub paragraph 1, registered trademark with an application date or an earlier priority date in the Republic of Kosovo – Law on amending trademark law 2015;
Art. 7, paragraph 2, sub paragraph 2, application for registration of trademark, with application date or earlier priority date, in registration process;
Art. 7, paragraph 2, sub paragraph 3, trademark that is well known in the territory of the Republic of Kosovo, on the date of application for trademark registration, or when appropriate, the right of priority requested in relation with the application for trademark registration;
Art. 7, paragraph 2, sub paragraph 4, community trademark or application for registration of community trademark, as determined by paragraph 1 of Article 83 of this law;
Art. 7, paragraph 2, subparagraph 5, registered trademark according to internationals agreement which have effect in the Republic of Kosovo;
Art. 7, paragraph 3, in case of an objection by the owner of the earlier trademark, under Article 7.2 of the basic Law, there should not be registered the identical trademark or similar to the earlier trade mark, which is protected for goods or services that are not similar to those for which the earlier trade mark is registered, if the earlier trademark has a reputation in the Republic of Kosovo and by the use of the trademark in question, reasonably, an unfair advantage is realized by distinguishing characteristics or reputation of the earlier trade mark or distinctive feature or reputation of the earlier trade mark are damage.
Art. 7, paragraph 4, in case of an objection by the owner of the earlier trade mark, trademarks should not be registered if the representative or agent of the owner of the trademark without the authorization of the owner applies for trademark registration in its own name, except when the representative or agent justifies his actions.) of the Law on Trademarks and the Law amending the Trademark Law)).
The following parties may file an opposition:
- earlier trademarks holders with an application date or earlier priority date (Articles 7(2) and (4)), as well as individuals licensed by trademark holders (Article 7(1));
- earlier trademark holders (Article 7(3); and
- earlier trademark holders (Article 7(4)).
The same requirements as described above apply to opposition actions against trademarks that have been the object of an amended application (Article 38(2)). In other respects, an application for registration of a trademark may be amended, upon request of the applicant or ex officio, only by correcting the name and address of the applicant, errors of wording or of copying, or obvious mistakes, provided that such correction does not substantially change the trademark or extend the list of goods or services.
The opposition action must be submitted in writing and specify the grounds for action. Subordinate legislation governs the filing requirements for opposition actions, including the fee to be paid.
If, on the date of publication of an application to oppose a trademark registration, the earlier trademark that is the basis for an opposition action is the subject to a pending revocation procedure or a pending invalidity procedure, the Intellectual Property Agency will suspend the opposition procedure until the decision on the earlier revocation or invalidity procedure has become final.
What is the usual timeframe for opposition proceedings?
Opposition actions must be submitted within three months of the date of publication. Fee, facts and grounds for such opposition must be submitted at that time.
Are opposition decisions subject to appeal? If so, what procedures apply?
Opposition decisions can be appealed. A first-instance decision of the Commission of the Ministry of Trade and Industry may be appealed to the commission’s second instance. A second-instance decision may be appealed to the court.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
A request for cancellation for non-use may be submitted to the Intellectual Property Agency if, within a continuous period of five years from the trademark registration date or date of last use:
- the trademark has not been put to genuine use in Kosovo in connection with the goods or services for which it is registered; and
- there are no proper reasons for non-use.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark registration can be revoked on the following grounds:
- if, as a consequence of acts or inactivity of the holder, the trademark has become the common name in the trade for a product or service in respect of which it is registered; or
- if, as a consequence of the use made of it by the trademark holder or with its consent, in respect of the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
Who may file a request for revocation and what is the statute of limitations for filing a request?
A request for revocation may be submitted to the Intellectual Property Agency by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers that, under the terms of the law governing it, has the capacity in its own name to sue and be sued. The statute of limitation is five years from the trademark registration date.
What are the evidentiary and procedural requirements for revocation proceedings?
The revocation request must:
- be submitted in writing;
- specify the grounds on which it is based; and
- be accompanied by the payment of the revocation fee.
What is the appeal procedure for cancellations or revocations?
In cancellation and revocation procedures, the Intellectual Property Agency sends a copy of the request for cancellation or revocation to the trademark holder and invites it to submit its objections within 60 days of the date of receipt of the invitation.
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 agency’s Official Bulletin.
The trademark will cease to have effect from the date of receipt of the declaration of surrender by the agency.
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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
The Law on Trademark applies. An assignment must be registered in order to have effect. A request for change must be submitted at the Intellectual Property Agency. An assignment agreement and a document such as a certificate that proves that the assignment exists, must be submitted. The change will be recorded by the agency and a decision will be issued to the rights holder.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
The Law on Trademark applies. A licensing agreement must be registered in order to have effect. A request for change shall be submitted at the Intellectual Property Agency. The licensing agreement must be submitted. The change will be recorded by the agency and a decision will be issued to the right holder.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Article 17 of the Law on Trademarks governs trademark licensing agreements.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
This is new field for Kosovo.