Trade and Service Marks
– The Law on Trademarks No. 04/L-026, published on August 24, 2011 in the Official Gazette of the Republic of Kosovo, in force since September 8, 2011, amended by Law No. 05/L-040 of August 24, 2015.
– Administrative Instruction No. 08/2016 on Early Examination of Applications for Protection of Trademarks, in force since July 7, 2016.
– Administrative Instruction No. 14/2016 on Trademark Registration, in force since September 7, 2016.
Membership in International Conventions
– Kosovo is not a member of any international conventions related to intellectual property matters, except:
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since July 14, 2016.
Applicant: individuals or legal entities.
Foreigners and nationals not living in the country: must have a local attorney.
Kinds of protection: individual, collective and certification trademarks.
Marks for services: protection is provided for.
Registrability: a trademark is granted to a sign which can be graphically represented, and which serves to distinguish goods and services in commercial circulation, such as: words, including personal names, designs, letters, numbers, the shape of goods or their packaging, colors as well as a combination of all the above.
Not registrable: marks which in their overall appearance are not capable of distinguishing goods and services in economic circulation; marks which do not contain any distinctive feature; marks which exclusively consist of signs or indications that may be used in trading for determining type, quality, quantity, intention, value, geographical origin, time of production of goods or conducting services or showing other features of goods and services; marks which consist exclusively of signs or indications that have become common in everyday language or are used confidently and have become common trading practices (an objection on any of the aforementioned grounds can be overcome by proving distinctiveness acquired prior to filing of the application); marks which exclusively consist of a shape determined by the nature of goods, a shape which is necessary to obtain a certain technical result or of shape which gives substantial value to the goods; marks which are contrary to moral principles and public order; marks which may cheat the public, for instance regarding the nature, quality or geographical origin of goods or services; marks which have not been authorized by the competent authorities, pursuant to Article 6 of the Paris Convention; marks the use of which may be prohibited by provisions of any other law; trademarks which contain symbols, emblems and State blazons which have not been determined in Article 6 of the Paris Convention and which are of general interest to the Republic of Kosovo, except cases when their registration have been permitted by a competent body; marks for wines or alcoholic drinks containing or consisting of a geographical indication which identifies such wines or alcoholic drinks as not having that origin; marks containing or consisting of a denomination of origin or a geographical indication with effect in the territory of the Republic of Kosovo, if application for registration of the trademark has been submitted after application for registration of a denomination of origin or a geographical indication for similar goods.
Association (collective) marks: registrable.
Certification marks: registrable.
Priorities: in general, from the filing date of the trademark application; Union priority: six months, must be claimed in the application; exhibition priority: six months, must be claimed in the application.
Classification: International Classification of Goods and Services (Nice Classification).
Territory covered: Kosovo.
Filing requirements (to be sent to resident agent for filing of application):
1. High quality electronic sample of the mark (for device marks) (max. size 8 x 8 cm);
2. List of goods and services, classified in accordance with the International Classification;
3. Priority certificate, if priority is claimed (must be filed within three months of the filing deadline);
4. Power of attorney, original or notarized copy thereof/legalization not required (must be filed at the time of filing). Note: a general power of attorney must be notarized.
Electronic filing: not available.
Electronic signatures: are not accepted (only wet signatures).
Examination: formal examination as to completeness and formal requirements, i.e. absolute grounds for registration. The IP Agency may request a disclaimer for a part of the mark, which is not registrable.
Publication of the application: after having established that the application fulfills the conditions set out by the Law, the trademark application is published.
Opposition: provided for within three months from the publication of the trademark. Also, third parties can submit observations to the IP Agency within three months from the publication of the application. In cases of publication of an amended application, opposition may be filed within the three-month deadline from the date of the publication of the amendment. The IP Agency asks the applicant to pay the fee for the first ten years of trademark protection. Upon payment, the IP Agency registers the trademark and publishes the same in the Official Journal. The Certificate of Registration is issued upon request from the trademark owner and upon payment of a fee.
Letters of consent: not defined by Law and there has been no practice of the IP Agency.
Amendment of application: it is not possible to make a substantial modification to the mark, or to add goods or services to the list, but amendment of name and address of the applicant, errors of wording or copying, and amendment of obvious mistakes is allowed, provided that such corrections do not substantially change the trademark or extend the list of goods or services.
Division of application: possible.
Urgent procedure: provided for if requested by the applicant (cases defined by by-laws).
Restoration: possible if a deadline in the procedure is omitted. The request has to be filed within three months from the date when the existence of the reason of non-completion ceases or from the date of notification of the omission, but no later than one year from expiry of the omitted deadline (not applicable for renewals or for payment of official fees). Continuation of proceedings is also provided for and may be filed within sixty days from the expiry of the time limit.
Appeals: the Board of Appeal has been established by Administrative Instruction No. 09/2012, in force since June 19, 2012. The decision of the IP Agency can be appealed by the interested party within a fifteen-day deadline from the receipt of the decision of the IP Agency. The Committee will decide on the appeal within thirty days of its receipt. It is possible to initiate a lawsuit at the competent court within thirty days from the receipt of the decision of the Appeal Committee.
Delivery of document: when requested, usually a couple of years after filing.
Beginning of protection: from date of filing the application.
Duration: the term of a trademark is ten years from the filing date of the trademark application.
Renewals: every ten years. A trademark can be renewed an unlimited number of times.
Latest term for renewal: before expiry of the term for which the fees have been paid.
Term of grace for renewal: six months, with 100% fine.
Owner’s rights: exclusive right to use the registered trademark and to prohibit unauthorized use by a third party, except if the trademark is a third party’s personal name or address, or it is an indication of the kind, quality, quantity, value, geographical origin, the time of production or other characteristics of goods or services, or a mark the use of which is necessary to indicate the purpose of the goods or services especially in the case of additional equipment or spare parts. The owner shall not be entitled to prohibit third parties to use in trading practice an earlier right which only applies in a particular locality if that right is recognized by the Laws of the Republic of Kosovo within the borders of the territory in which it is known.
Trademark exhaustion: limited to Kosovo.
Obligation to use: the holder of the trademark has to use it. If he does not use it without justified reason, in an uninterrupted period of five years from the registration date or from the date of last use, the trademark can be cancelled at the request of an interested party. Use in a slightly altered form and use on goods solely for export, constitute trademark use.
Marking of registered goods: optional.
Text of marking: not provided for.
Modification of the mark after registration: not possible.
Changes in the list of goods: possible, only if the list is restricted.
Corrections: possible to correct typographical errors.
Assignment: provided for trademarks and trademark applications; contract must be in a written form and registered to take effect vis-à-vis third parties.
License: provided for trademarks and trademark applications; can be exclusive or not exclusive; contract must be in a written form and registered to take effect vis-à-vis third parties.
Modification of Protection after Registration
Compulsory license: not provided for.
Expropriation: not provided for.
Cancellation: third parties can request cancellation of the trademark that was not used, that became a generic term, that became confusing with respect to the nature, quality or geographical origin of goods/services.
Invalidation: a trademark can be invalidated if it is established that the conditions for granting the trademark were not fulfilled at the time protection was granted; if the applicant acted in bad faith; if an earlier identical trademark registered for the same goods and/or services or an earlier similar trademark registered for the same goods and/or services already exists; if the representative of the trademark holder applies for registration of the trademark in the name of the trademark owner without his authorization; if a prior right exists, especially right to name, right to personal portrait, copyright and industrial property rights; if it infringes on the right of an earlier mark in use in Kosovo which confers to its holder the right to prohibit its use. The request can be filed with the IP Agency during the whole period of trademark duration. The exception is made for the owner of an earlier trademark, which cannot act against a later trademark, if he has not challenged its use in the five years preceding the invalidation request and if there has been no bad faith on the part of the owner of a later trademark (acquiescence). Invalidation request will be refused if the owner of the earlier trademark did not use his trademark in the five years preceding the invalidation request, unless the owner of the later trademark acted in bad faith.
Infringement and penalties: the court can be requested to prohibit the activities which constitute infringement, to order the destruction of the infringing goods, removal, confiscation and destruction of the materials and tools used in the production of these goods, to grant indemnification, to order the publication of the judgment at the expense of the infringer, and to order the infringer to provide information about third parties which participated in infringing activities. Preliminary injunctions and measures to secure evidence are provided for. Fines may be imposed both on a company and company officials. Imprisonment provided for in the Criminal Code.