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Intellectual property in Albania is protected by both local legislation and international treaties. Albania is a signatory to most of the international conventions and agreements in relation to IP rights, such as the WIPO, Paris, and Berne Conventions, the Nice, Hague, Strasbourg, and London Agreements, the Patents Cooperation Treaty and the European Patents Convention, the Madrid Agreement and Protocol, and others. 

Industrial Property law addresses four types of IP rights:

• Patents/utility models
• Industrial designs
• Trademarks
• Geographical indications

The Albanian Office on Patents and Trademarks (“ALPTO”) is responsible for ensuring the implementation of  Industrial Property law by examining and registering industrial designs, trademarks, and geographical indications, issuing patents and utility models, examining oppositions filed to the Board of Appeal, and representing Albania before the courts and international organizations in IP matters. Filing International or European patents or utility models designating Albania is also possible through ALPTO, as is registering international trademarks in accordance with the Madrid Agreement. 

Copyright law addresses the protection of copyright and related rights and the operation of collective management agencies. The Albanian Copyright Office is responsible for the supervision and monitoring of authorial rights and for the licensing of collective management agencies.

The procedure for registration and granting of IP rights in Albania is consistent with international practice. Patents applications in Albania therefore are subject to the same three-part test of patentability known as the Trinity: (1) Novelty; (2) Inventive Step; and (3) Industrial Application. And Trademark registration requires a graphic representation in either two or three dimensions with a combination of colors/shades and letters. Foreign companies wishing to file an application must be represented by a local agent licensed by ALPTO and authorized by virtue of a notarized and apostilled power of attorney.

The assessment of applications by ALPTO involves examination on both formal and absolute grounds, while third parties may oppose the granting of a patent or trademark registration on formal and substantive grounds for infringement of prior registered rights. Oppositions and appeals against initial refusals of applications ex officio are subject to review by the Board of Appeal and thereafter by the Court.

Infringement matters are extensively addressed by the law in a rather elaborate manner, and may be dealt with though injunctive relief measures, the seizure and destruction of goods and of the means for producing them,  prevention of imports of infringing goods by customs authorities, publication of court decisions in public media at the expense of the infringer, protective interlocutory injunctions before final court decisions, and claims for direct/indirect damages.

Although a lack of experience of Albanian judges with IP law has often resulted in ineffective interpretation and application of these provisions, there is an increasing awareness among businesses about IP protection, and also an evolution of judicial legal analysis, with in-depth evaluation of criteria required by local and international legal frameworks on IP rights. Most encouraging is the evolving jurisprudence on the concept of “well-known trademarks” as stipulated in the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, in which courts examine the extent of general public awareness, the duration of use of the mark and the territory in which it is used, and the amount of advertising carried out by the owner.

Unfortunately, in establishing if there is trademark infringement, judges have generally assessed whether the infringing mark was used for the same classes of goods and/or services as the prior registered mark without analysing the risk of trademark dilution, which could damage the good name of the previous mark even if used for non-competing products, as provided by the law on industrial property. Thus, there is still room for improvement in judges’ awareness, understanding, and application of IP law.

Nonetheless, recent developments are positive, and indicate a strengthening of protections for right-holders. For one thing, with the recent adoption of the new law on Administrative Courts (Law 49/2012), all cases involving ALPTO and registration of IP rights shall, going forward, be assessed by the newly founded Tirana Administrative Court, which will further specialise the judges applying IP law, thus providing better protection of IP rights.

Another positive development is the recent signature of the London Agreement by the Republic of Albania, pursuant to which Albania shall not require the translation of a patent if it is issued in one of the EPO’s official languages. It is also expected that the procedures on EP validation shall be reflected in Albanian implementing acts in the near future.

Finally, there is a new draft law on Copyright, which seeks to fully harmonize Albanian legislation with EU directives and to resolve issues of the current law in relation to collective management agencies. The draft law is in a process of public consultation and its adoption is expected in the next few months.

In light of the above, things are looking increasingly bright for IP rights-holders in Albania.   

Based on this judgment, the Appellate Division has been reluctant to issue a ruling of Unfair Intention in opposition cases where other legal grounds for trademark invalidation exist, such as confusing similarity with an earlier mark or a mark having a reputation.     

By Panagiotis Drakopoulos, Partner, Drakopoulos Law Firm

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

Despite being the least developed country in Europe, Kosovo offers a decent and competitive investment environment. To enable a smooth transition from the previous economic and legal system, the Kosovo Government has implemented a number of economic, legal and institutional reforms. As a result, the World Bank rated Kosovo as the most dynamic reformer among Central and Southeast European countries in its Doing Business Index 2013 report.

The Kosovo Investment Promotion Agency’s statistics show that a number of industrial and business sectors, such as agriculture, wood processing, information technology and telecommunications, construction, mining and energy, and textile are very well developed. The Kosovo Central Bank Report showed foreign direct investment (FDI) increasing significantly during the first nine months of 2013, reaching a value of EUR 205.4 million, an increase of 15% compared with the same period in 2012. These investments were mostly in the real estate, energy, financial services, transport and telecommunication, construction, production, and minerals sectors, which make particularly intensive use of intellectual property rights (IPRs). This article aims to provide investors with a brief and practical explanation of the current state of IPR protection and enforcement in Kosovo.

Legislation

The first set of IP laws was enacted only in 2004. But soon after ratification, it appeared that significant amendments were needed. In 2011, three new IP-related laws were adopted and entered into force. The Laws on Trademarks, Patents, and Industrial Designs were supposed to bring Kosovo IP legislation in line with AcquisCommunautaire.

The new IP legislation was also aimed at reducing burdensome IP-rights protection procedures, which could have raised serious concerns regarding the protection of potential and current FDI in Kosovo. As one example, an applicant of a patent application which had been published in the Official Bulletin had previously to make sure that a request for grant of the patent had been filed within six months from publication date. The 2011 Patent Law provides for the publication of granted patents only. Hence, the requirement of a request for grant of patent has been removed. Kosovo is not a member state of the Patent Cooperation Treaty (PCT) or the European Patent Convention (EPC). Therefore, the only certain way to obtain Kosovo patent protection at this time is to file a national patent application with the Kosovo IP Agency (the “Agency”) within the 12-month Paris Convention priority period. The regular PCT national phase or European Patents extension is not possible.

The 2011 Law on Trademarks also introduced important changes concerning trademark acquisition. Trademark rights are only acquired through registration with the IP Agency. Unregistered well-known trademarks could be claimed against the registration of confusingly similar trademarks. However, enforcement of unregistered well-known trademarks before competent courts is no longer possible. Because Kosovo is not a member of the World Intellectual Property Organization (WIPO), it is not possible to extend an International Registration trademark to Kosovo, and it is therefore strategically important that owners register their most important trademarks with the Agency.

Administration of IPR

Industrial property rights in Kosovo are acquired through registration with the competent authority. The registration procedure for administration of patents, trademarks, industrial designs, topographies of integrated circuits, and geographical indications is under the competence of the Agency. The number of applications has risen considerably since the Agency opened in November 2007. About 20,000 applications have been filed with the Agency so far. Because Kosovo has not ratified any of the international treaties or conventions, foreign right holders can protect their rights through the national route only. 

Establishment of a Trademark Database and digitalization of data for thousands of applications increased the efficiency of the Agency. A registration certificate can now be obtained in less than two years. Moreover, an accelerated examination procedure can be approved for trademark owners whose rights are being infringed. The new IP legislation also introduced an Appellate Commission as the second instance administrative authority, empowered to review and rule on the Agency’s decisions.

Enforcement

The Kosovo Customs and the Market Inspectorate are the institutions responsible for administrative enforcement of IPR. The Kosovo Customs will apply border measures as provided by the Law on Customs Measures, acting in cases of import, export, transit, customs warehouses, inward processing of products, customs supervision, and temporary importation placed in the free customs zone. Most infringing goods, particularly counterfeits, are imported. Thus, filing a Customs Watch Application with the Kosovo Customs is the recommended action. The Law on Customs provides a fast-track procedure for destruction of detained goods, making it worthwhile for the client to invest time and money into enforcement. On the other hand, the Market Inspectorate has, among other things, competences to inspect Kosovo commercial and production premises in order to ensure consumer protection, industrial property rights protection, and copyright protection. 

IPR-related crimes are also punishable under the Criminal Code. The Department for Economic Crimes and Corruption within the Kosovo Police, the State Prosecutor’s Office, and local courts with territorial jurisdiction are responsible for enforcing IPRs in cases concerning intellectual property infringement, including copyright violation. Only a few criminal IPR cases have been adjudicated since protection of IPRs entered the Criminal Code.

In cases of trademark, patent, or design infringement, an owner is also entitled to institute civil proceedings. Several remedies are available to holders. The holders may request that the court confirm the existence of the infringement and prohibit future infringement acts and they may further ask the court to order seizure and destruction of the infringing products. They may also claim damages, request publication of the ruling, or ask the court to order the infringer to identify third persons involved in the production or distribution of the infringing goods or services and channels of distribution. Provisional measures of evidence preservation, property preservation, preliminary injunctions, and unwarranted ex parte injunctions are also possible. The Commercial Matters Department within the Basic Court of Pristina has competence to adjudicate industrial property infringement cases. A professional judge will hear these cases. Actions before the courts may take up to two years to be decided. The judicial system lacks expert judges. There is no specialized court or unit to handle IPR-related matters only. Only a small number of cases actually gets to the court, while the remaining infringement cases are settled through alternative dispute resolution mechanisms, mainly negotiations.

Looking Forward

The adoption of the IPR Strategy 2010-2014 showed that the Kosovo Government understands that weak IP protection in IP-sensitive areas discourages FDI, and that low IPR protection leads foreign firms to focus on distribution rather than local manufacturing. Even though not bound by any treaty, Kosovo has established very good IP legislation. Institutional progress was also noted and acknowledged in several international reports. However, great challenges remain: enforcement of IPRs, the low level of public IPR awareness, building of technical and professional capacity for IPR administration and enforcement institutions (including specialized courts), accession of Kosovo to IP-related international institutions, and ratification of IP-related international conventions.    

By Kujtesa Nazaj, Director, SDP Kosove

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.

The New Year brought good news for Romanian intellectual property counselors. The Romanian State Office for Inventions and Trademarks (SOIT) introduced the trademark E-filing system. Long awaited by both trademark professionals and common users of the national trademark filing system, the E-filing (web-based) application was developed by SOIT in collaboration with the Office for Harmonization in the Internal Market (OHIM) and is aimed at reducing the time involved in filing national Romanian trademark applications. It is both accessible and easy to use.

The system was designed to be used by anyone who has access to the Internet. It is only available in Romanian and does not require login user credentials. Although it most likely involves certain back-office safety and data protection features, once accessed, it is designed not to go offline or disconnect even if its use is interrupted for a long period of time. 

One of the system’s greatest benefits is its 24-hour availability, which provides applicants with the opportunity to file trademark applications at any time, irrespective of SOIT working hours. In addition, the system allows users to locally save their drafted applications onto their personal computers for future use.

Similarly to the electronic filing system available on OHIM’s website for the filing of Community trademarks, the Romanian system allows applicants or their representatives to upload any documents they wish to provide to the authority when filing a national application directly into the system and attach them to the E-filing form, such as: a Power of Attorney, documents regarding a priority right invoked in the application, or documents certifying that the official filing and examination fees have been paid at the time of filing. However, it should be noted that the system only supports .gif files when providing a graphic representation of figurative / combined trademarks. 

Although during the testing phase users did face certain errors when uploading .pdf files into the system or when inserting certain information into the electronic application form, SOIT has assured users that such errors will soon be corrected.

The system also involves certain limitations resulting from the application of legal provisions currently in force in Romania with respect to the trademark registration procedure and the electronic signature. Thus, to obtain an official regular trademark filing number by using the E-filing system, applicants must provide the Office with the specific information and documents required by law (which are of course also still required if the trademark application is filed via a standard paper-form). Thus, applicants must send the printed application form issued by the filing system and bearing an original signature (and stamp, if necessary) to the Office within 30 days of filing the electronic application. Also, according to the Romanian Law on Trademarks, the Power of Attorney granted by the applicant to its professional representative must be also lodged with the Office, and signed in original, even if a copy was already attached to the electronic application. 

Therefore, 2014 has started well, and sounds like it’s going to be a good year for intellectual property in Romania.    

By Ana-Maria Baciu, Partner, and Andreea Bende, Counsel, Nestor Nestor Diculescu Kingston Peterson

This Article was originally published in Issue 1 of the CEE Legal Matters Magazine. If you would like to receive a hard copy of the magazine, you can subscribe here.