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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.
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