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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.
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