KOSOVO: EU Harmonization Requirements Prompt Significant Changes in New Trademark Law

The new Law on Trademarks, which entered into force in Kosovo on July 28, 2022, has introduced significant changes while aiming to harmonize local legislation with European Union trademark law, notably Directive (EU) 2015/2436.

The new law eliminates the graphical representation requirement. A sign can now be represented in any form that distinguishes the goods or services applied for from those of other undertakings and which enables the authorities to establish the scope of protection sought.

The law adopts the literal approach when interpreting the scope of protection. Applicants must precisely define the list of goods and services to enable the competent authorities to determine the extent of the protection sought on that sole basis.

The law introduces additional absolute grounds for refusal. The authorities will not register a sign if it conflicts with an existing designation of origin, geographical indication, traditional term for wine, traditional specialty guaranteed, or plant variety. A new relative ground permits an opposition to an application filed in bad faith.

Under the new law, trademark owners cannot prohibit the import of genuine goods bearing their trademarks after they have placed them in any of the following markets:

• Kosovo;
• An EU member country;
• A European Economic Area member country;
• A Western Balkan country; or
• A country with which Kosovo has a free trade or trade facilitation agreement.

It is uncertain how the courts will interpret the new exhaustion regime, especially with regard to cases initiated under the previous law, which provided for the national exhaustion of rights.

The law expands the scope of infringement by establishing additional uses of similar or identical signs that trademark owners may prohibit, that is, use of a sign:

• As a company name;
• In advertising; and
• On packaging, labels, tags and security or authenticity features or devices, and placing these on the market.

The law introduces other changes relating to trademark enforcement, including the following:

• A change of the time frame to appeal first-instance decisions, from 15 days to 30 days from the receipt of the decision;
• The possibility to claim the non-use defense in infringement and preliminary injunction proceedings; and
• The possibility to replace a court order for the seizure and destruction of infringing goods with monetary compensation for the injured party.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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