Trademark Practice and Forms Treatise Chapter - Albania

Mar 18 2011 - 13:14

Prepared by:
Taras Kulbaba,
PETOŠEVIĆ

OVERVIEW: The Basics

COUNTRY FACTS

Location

Albania is located in Southeastern Europe. It borders the Adriatic Sea to the west and the Ionic Sea to the southwest, Montenegro to the northwest, Kosovo to the northeast, the Republic of Macedonia to the east, and Greece to the south and southeast.

Major Cities

Tirana (capital), Durrës, Korçë, Elbasan, Shkodër, Gjirokastër, Vlorë and Kukës

Government

Parliamentary democracy

Legal System

Civil law

Currency

Lek (ALL)

Est. GDP

US $23.95 billion (2010 est.; PPP)

Per capita (PPP): US $8.000 (2010 est.)

Economic Sectors

(2010 est.)

Agriculture: 58%

Industry: 15%

Services: 27%

International IP Agreements

  • WTO/TRIPS Agreement
  • WIPO Convention
  • Paris Convention
  • Madrid Agreement/Madrid Protocol

See Trademark Practice and Forms, International Trademark Protection

Applicable Classification

  • International Classification (Nice)
  • Multi-class registration

Home Registration

Not required

Right to Trademark

First to file (Industrial Property Law, Art. 144)

Duration of Protection

Initial Period: 10 years from the application date
Source: Industrial Property Law, Art. 164

Renewal Period: 10 years
Source: Industrial Property Law, Art. 164

Registration Priority

Paris Convention priority available
Source: Industrial Property Law, Art. 147-148

OVERVIEW: POLICIES AND TRENDS

Trade and Regulatory Climate

Over the past twenty years Albania has been undergoing a long transformation from a communist, centrally planned economy to a liberal and market-oriented economy. During this transition, Albania implemented many economic, legal and institutional reforms, which resulted in the country’s accession to the WTO in 2000 and an application for the European Union membership on April 28, 2009.

The ongoing changes in the economy can be characterized by a growing services sector and a slowly decreasing agriculture sector. In 2003, Albania adopted the legislation on protection of competition and established the Competition Authority, which contributed towards enhancing competition on the market. The current investment-oriented government of Albania can be characterized by its openness to foreign investments and an increased level of protection of investors’ rights. As a result, foreign direct investments amounted to EUR 675 million in 2008. Albania has an open trade government, which, nevertheless, is less open than those of the average European and Central Asian countries. So far Albania has not been involved in any dispute under WTO rules.

The legislation on intellectual property rights has been significantly improved during the process of Albania’s accession to the WTO. New laws on copyright (2005) and industrial property rights (2008) were introduced in order to harmonize the Albanian IP legislation with the EU directives. In 2010 the Council of Ministers of Albania adopted the IPR Enforcement Strategy for 2010-2015.

Why Register Locally?

According to the Industrial Property Law of Albania, the rights to a trademark can be obtained only through the registration of a mark. Although any person can use his/her mark for his/her goods/services without registration, the legislation does not prescribe enforcement of non-registered trademark rights. Moreover, since the Albanian legislation follows the “first-to-file” rule, it is recommended to file an application for trademark registration as soon as possible, before any other person files an application for the same mark.

The Future

Considering that Albania introduced new legislation on protection of intellectual property rights recently, no further developments are expected in this area in the near future. On the other hand, the IPR Enforcement Strategy for 2010-2015 foresees a number of improvements to the IPR-enforcement system, which should be implemented in the following years. The suggested improvements include cooperation and coordination of various institutions involved in enforcement of IP rights, training of specialists and education of the public about IP rights, introduction of criminal penalties for infringement of IP rights, etc.

OVERVIEW: LAWS, RULES, REGULATIONS

The Law of the Republic of Albania on Industrial Property no. 9977 of July 07, 2008
Effective as of November 01, 2008

The Regulations for the Registration of Trade and Service Marks
Approved by the Decree of the Cabinet of Ministers no. 1706 of December 29, 2008

Effective as of February 04, 2009

REGISTRATION REQUIREMENTS

What is a Mark?

Any sign or combination of signs represented graphically, which serve to distinguish goods and/or services of one natural or legal person from those of another natural or legal person, can be registered as a trademark.

Any of the following may be registered as a trademark:

  • Words, including personal names, letters, numbers, abbreviations;
  • Figurative signs, including drawings;
  • Two or three-dimensional signs, shapes of goods and/or of its packaging;
  • Combinations of colours or shades, including colors per se;
  • Any combination of the above listed signs.

Nontraditional marks, such as sound and light marks, which can be represented graphically, can also be registered in Albania.

Which Marks May be Registered?

Trademark for Goods / Trademark for Services (Service Mark)

According to the Industrial Property Law, there is no difference between Trademarks [Marks for Goods] and Service Marks [Marks for Services]. Although Part IV of the Industrial Property Law is titled “Trademarks and Service Marks”, the very first article of Part IV of the Law indicates that the term “mark” is used to designate both marks that are registered for goods and marks registered for services. Similarly, according to the Regulations, “mark” can be used for both trademarks and service marks.

However, in the daily vocabulary of a trademark agent the term “service mark” is sometimes used to distinguish marks used or registered for services from those that are registered for goods only (“trademarks”).

Collective Trademark

A collective mark is a trademark that can be registered and used by a commercial or industrial association, group or other similar union of legal entities to distinguish the goods/services that are produced/rendered by the members of such union from the goods/services of other persons.

Any group of legal entities, which is registered in Albania and has all rights and obligations of a legal entity, can be an applicant for a collective trademark.

An application for registration of a collective trademark should be accompanied by regulations on use of a collective mark.

Certification Trademark

The Industrial Property Law does not contain any specific provisions regarding certification trademarks.

Colored Trademark

Colors or combinations of colors can be registered as trademarks in Albania if such marks comply with the requirements for registration of a trademark as prescribed by Articles 140-143 of the Industrial Property Law.

What Cannot be Registered?

The following cannot be registered as a trademark in Albania:

Non-distinctive or Descriptive Marks

A sign cannot be registered as a trademark if:

  • It is devoid of any distinctive character;
  • It consists exclusively of elements that may serve in the market to indicate the kind, quality, amount, purpose, value, geographical origin or time of production of the goods or the performance of the services, or any other characteristics of the goods or services;
  • It consists exclusively of elements that have become customary in daily language or in established practices of the trade;
  • It consists of forms or lines which result from the nature of the goods or services or which are essential for obtaining a technical result;
  • It consists of forms or lines that add substantial value to the goods.

Marks That Are Immoral

A sign cannot be registered as a trademark if it consists of elements that violate public interests or are in conflict with the public moral or public order.

Deceptive Trademarks

The following signs cannot be registered as a trademark in Albania:

  • Signs that consist of elements tending to mislead the public as to the nature, quality or geographical origin of the goods or services for which a sign is applied;
  • Signs that consist of geographical indications for wines or alcoholic beverages, which do not originate from the area indicated by the geographical indication, even if the actual area of origin of goods is indicated or a geographical indication has been translated and is accompanied by such words as “kind”, “type”, “style”, “imitation” or other similar words.

Marks with Unauthorized Content

Any of the following signs shall not be allowed for registration:

  • Signs that consist of names, portraits or pseudonyms of individuals that are well-known among the public in Albania, if no authorization or consent has been obtained from the person concerned or his/her descendants for use of such signs in a trademark;
  • Signs that consist of names of countries (full or abbreviations); state emblems; medals; official seals or signs adopted by the Government; emblems of well-known international organizations, including abbreviations of their names; religious symbols; national flags, etc.;
  • Signs that consist of elements of well-known trademarks protected according to Article 6 bis of the Paris Convention.

Identical, Similar

A sign cannot be registered as a trademark in Albania if:

  • It is identical with an earlier trademark, and the goods and/or services for which the mark is applied for are identical with the goods and/or services for which the earlier mark is protected;
  • It is identical with or similar to an earlier trademark, which is protected for identical or similar goods or services, and because of the similarity of the marks and the goods or services covered by them, there exists a likelihood of confusion on the part of the public, which includes likelihood of association with the earlier mark;
  • It is identical with or similar to an earlier trademark and is applied for goods/services that are not similar to those for which the earlier mark is registered, where the earlier trademark has a reputation in the Republic of Albania, and where the use of the later-registered mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark;
  • It is identical with or similar to the full or substantial part of a commercial name where the owner of such commercial name produces goods or provides services that are identical or similar to those goods or services for which the mark is applied;
  • It is identical with or similar to the name, surname or appearance of a natural person;
  • It reproduces or is similar to any industrial property right valid in Albania, including the names of protected varieties of plants or animals, or geographical indications;
  • It is identical with or similar to any copyrighted work, including a part of such work.

Who Can Register?

Proprietor or User

Any natural person or legal entity has the right to apply for registration of a trademark in Albania.

Authorized Agent

Persons who do not have a permanent residence in Albania and legal entities that do not perform commercial activities in the territory of Albania cannot file trademark applications or communicate with the Albanian Patents and Trademark Office directly. Such persons should act before the Albanian Patents and Trademark Office through an authorized representative in Albania. A respective Power of Attorney should be provided to confirm the authority of a representative to act on behalf of the applicant.


See Registration Forms; Power of Attorney

Priority Registrant

An applicant for registration of a trademark in a country member of the Paris Convention or member state of the World Trade Organization shall enjoy — for the purpose of filing a trademark application in Albania for the same trademark in respect of the same goods and/or services — a right of priority subject to filing of a trademark application in Albania within a six-month period from the date of filing of the first application. The same rule shall apply to cases where a trademark was first displayed for the respective goods and/or services at an international exhibition taking place in a country that is party to the Paris Convention (first exhibition), not more than six months before filing the trademark application in Albania.

TRADEMARK REGISTER

Where is the Trademark Registered?

Trademark Register

The General Directorate of Patents and Trademarks, also known as the Albanian Patents and Trademark Office (herein after – the “ALPTO”) is a specialized governmental institution within the Ministry for Economy, Trade and Energy, responsible for registration and protection of industrial property rights in Albania.

The ALPTO maintains and administers, inter alia, the following registers:
1. Register of applications for registration of marks;
1. Register of registered marks;
1. Register of authorized representatives for marks (trademark agents).

The information contained in the registers is open to the public. Upon filing of a written request and payment of the official fee, the ALPTO shall provide an extract containing comprehensive data regarding a trademark registration concerned. Official trademark availability searches are also performed by the ALPTO upon receipt of a corresponding request and payment of the official fee.

The Newsletter of the ALPTO, which contains information concerning national trademark registrations in Albania in .xls format, is occasionally published on the official website of the ALPTO. However, the Newsletter does not contain graphical representation marks containing figurative elements.

Requirement of Distinctiveness

According to the Industrial Property Law, a sign cannot be registered as a mark in Albania if it is devoid of any distinctive character.

A separate Article of the Industrial Property Law is dedicated to the notion of distinctiveness. According to Article 141 of the IP Law in Albania, a sign should be considered distinctive if an average consumer can distinguish the goods and/or services of one undertaking from goods/services of other undertakings. The distinctive character of a sign should be evaluated in close connection with the goods/services it is intended to distinguish.

Exclusive Use Rights

The owner of a registered trademark is entitled to an exclusive right to use the trademark in the territory of Albania for the goods/services for which the trademark is registered.

The trademark owner is also entitled to prevent third parties from using the following in the course of trade, without his/her consent:

  • A sign that is identical to the registered mark for identical goods/services;
  • A sign that is identical or similar to the registered mark if, because of the identity or similarity of the goods/services for which the sign is used with the goods/services covered by the registered mark, there exists a likelihood of confusion among the public, including the likelihood of association between such sign and the registered mark;
  • A sign that is identical/similar to the registered mark and is used for goods/services that are neither identical nor similar to the goods covered by the registered mark, where the registered mark has a reputation in the Republic of Albania and where the use of such sign without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the good name of the registered mark.

In particular, the following actions may be prohibited by the owner of the registered mark:

  • Affixing the sign to the goods or to the packaging thereof;
  • Putting the goods on the market, offering the goods for sale, storage of the goods for the mentioned purposes under that sign;
  • Offering the services under that sign;
  • Importing or exporting the goods under that sign;
  • Using the sign in business or in advertising.

The owner of a non-registered mark which has been recognized as well-known in Albania is also entitled to the above indicated exclusive use rights.

Limitation on Exclusive Use Rights

The owner of a registered mark cannot prevent any third party from using, in the course of trade and in accordance with honest business practices:

  • His/her (the third party’s) name and address;
  • Indications of the type, quality, amount, destination, value, place of origin, time of production or other characteristics of the goods or performance of the services;
  • The registered mark, where it is necessary to indicate the intended use of the goods/services, in particular in the case of accessories or auxiliary parts to the goods marketed under the mark.

Enforcement

Where exclusive rights of an applicant, an owner of a mark, a licensee or any other authorized user of the mark as prescribed by the Industrial Property Law are infringed by a third party, such authorized user can file a lawsuit for protection of its respective trademark rights before the court. According to the Industrial Property Law, any unauthorized use, limitation, imitation or joint use of a registered mark, (where someone is using a registered mark along with its own mark), as well as the use of a mark for which an application has been filed or use of a well-known mark, shall be qualified as infringement.

A person whose exclusive rights have been infringed by actions, as indicated above, is entitled to request, in infringement proceedings before the court:
* Prohibition of further acts that constitute infringement of the respective trademark rights;
* Removal of the infringing goods from the channels of commerce or their destruction;
* Removal of equipment used exclusively or nearly exclusively for production of the infringing goods or destruction of such equipment;
* Publication of the final decision of the court in the public media at the expense of the infringer.

A lawsuit for infringement of trademark rights can be filed with the court within three years of the date when the plaintiff became aware of the infringement and of the identity of the infringer.

Validity

A registered mark is considered valid within its protection period, unless it has been declared to the contrary. A registered mark can be invalidated before the court if it has been registered in breach of the absolute or relative grounds for refusal (Articles 142 and 143 of the Industrial Property Law).

A mark can also be revoked by the court if:

  • It has not been put to genuine use for the goods it is registered for in the Republic of Albania within an uninterrupted period of five years;
  • It has become an ordinary (generic) name in the market for the goods or services for which it is registered;
  • As a consequence of the use of the mark by its owner or with the owner’s consent for the goods and services for which it is registered the mark misleads the public as to the nature, quality or geographical origin of such goods/services.

INITIAL REGISTRATION

Procedural Timeline

Search and advice

It is not required to conduct a search before filing a trademark application in Albania. However, an official trademark availability search can be ordered with the ALPTO.

Important! ALPTO is currently able to perform only word mark searches on the trademark database.

A report on the results of the search does not contain an opinion of the PTO regarding similarity of the trademarks revealed in the course of the search with the intended mark.

Application and fees

An application for trademark registration shall be completed according to the form FM1, which should be signed by the applicant or its representative. An application can be filed with the ALPTO directly at the Protocol Office or sent by mail or fax. If an application is sent to the ALPTO by fax, the original thereof should be submitted to the ALPTO within a month.

The trademark application should be filed in Albanian and signed by the applicant or its representative. A separate application should be filed for each trademark. The application should be accompanied by supporting documentation, according to the ALPTO rules and regulations.


See Registration Forms

Formal Examination

Formal examination of trademark applications is conducted by the ALPTO in the order that they were filed, based on the filing date. However, applications for International Registrations under the Madrid System for International Protection of Trademarks and applications for an accelerated registration of a trademark, where infringement of rights to a non-registered trademark has taken place in Albania, shall have priority over regular trademark applications.

Formal examination of a trademark application shall be completed within three months of the filing date. If an application meets all formal requirements as prescribed by the Industrial Property Law and the Trademark Regulations, the ALPTO enters the information about the trademark application in the database of applications and issues a filing certificate for the trademark application.

If a trademark application does not meet the formal requirements as provided by the Industrial Property Law and/or the Trademark Regulations, the ALPTO invites the applicant to remedy the deficiencies of the application within a period of three months from the notification date. The term for remedying the deficiencies in the application can be further extended by one additional month upon filing of a request and payment of the official fee.

If the applicant remedies the deficiencies in the application within the set term, the ALPTO enters the information about the trademark application in the database of applications and issues a filing certificate.

However, if the applicant does not remedy the deficiencies in the trademark application within the prescribed period of time, the ALPTO issues a decision on refusal of the trademark application.

Filing Certificate/Serial Number

A filing certificate is issued by the ALPTO upon completion of the formal examination of a trademark application. A filing certificate contains the following information:

  • Representation of the sign;
  • Name and address of the applicant;
  • Filing date and serial number of the application;
  • List of goods and/or services;
  • The colors of the mark (where colors are claimed as a distinctive feature);
  • Elements excluded from protection (if any);
  • Priority (if any).

Publication

A trademark application that has successfully passed the formal examination stage will be published in the official Industrial Property Bulletin of the ALPTO. The ALPTO publishes its Industrial Property Bulletin approximately once every three months.

The information about trademark applications as published in the Industrial Property Bulletin contains:

  • Trademark application number;
  • Filing date of the application;
  • Priority date (if any);
  • Name and address of the applicant;
  • Representation of the mark;
  • Elements excluded from protection (if any);
  • The colors of the mark (where colors are claimed as a distinctive feature);
  • List of goods and/or services.

Oppositions/Observations

An opposition against a trademark application can be filed with the ALPTO within three months of the date the application was published in the Industrial Property Bulletin. The grounds for filing an opposition against a trademark application are the relative grounds for refusal, as prescribed by the Industrial Property Law . An opposition can be filed by any person enjoying an earlier right, i.e. an applicant for an earlier trademark application, the holder of a registered mark, the owner of a registered commercial name, a person whose name is similar to the mark applied for registration, the owner of an earlier right of industrial property, as well as the owner of an earlier copyright.

The term for filing an opposition as indicated above cannot be further extended.

An opposition should be accompanied by the following documents:

  • The opposition form FM9;
  • An invoice confirming payment of the official opposition fee;
  • A Power of Attorney where an opposition is filed by a representative of the owner of the earlier right that is used as a basis for the opposition;
  • A certificate or any other document confirming the validity of an earlier right.

The ALPTO Appeal Board shall consider oppositions within three months from their filing date.

If the opposition form is not properly completed or if proof of payment of the opposition fee is not provided, the ALPTO shall consider the opposition as if it has not been filed. However, if an opposition is filed without a Power of Attorney (where required) or a document confirming the validity of an earlier right, the ALPTO shall invite the opponent to submit the missing documents within 30 days of the date of the submission of the opposition.

If an opposition meets all formal requirements as prescribed by the Industrial Property Law and the Trademark Regulation, the ALPTO will notify the applicant about the opposition filed and will invite him/her to submit his/her written reply to the opposition, accompanied by a document that will support his/her claim, within a month from the notification date. During the opposition proceedings, the ALPTO may request from the parties to the proceedings to submit additional materials or documents within a month of the date of such request. The ALPTO Appeal Board’s decision can be further appealed before the court of first instance within 30 days of the date the decision was passed.

Substantive examination

Within three months of the date a filing certificate is issued, the ALPTO shall conduct a substantive examination of the trademark application. During the substantive examination, the ALPTO examines an application for absolute grounds for refusal only.

Before a decision on the results of the substantive examination is made, the ALPTO may ask the applicant to submit additional documents within a period of two months. If the applicant fails to file the requested documents, the application will be refused by the ALPTO and the applicant will be notified about the refusal through written communication.

Re-examination

If an applicant does not agree with the refusal of its trademark application as issued by the ALPTO following the formal or substantive examination, he or she can appeal ALPTO’s decision before the Appeal Board within two months of the date the decision was passed, upon payment of the prescribed official fee. During the re-examination of ALPTO’s decision, the Appeal Board may request from the appellant to submit additional materials or documents within three months of the date of such request.

The Appeal Board’s decision with respect to refusal of a trademark application following formal examination of the application is final and cannot be appealed before any court. At the same time, the Appeal Board’s decision regarding refusal of a trademark application following substantive examination of the trademark application can be appealed before the court of first instance within 30 days of the date of receipt of the notification on the decision.

Registration

If a trademark application successfully passes the substantive examination and no oppositions against the trademark application are filed within the prescribed term, the ALPTO will grant registration and will invite the applicant to pay the registration fee within a month of the date of such notification. Upon payment of the prescribed registration fee, the ALPTO will enter the information about the registered mark into the Trademark Register and will issue a Certificate of Registration within three months of the date of payment of the registration fee. The ALTPO will then publish the registered mark in the Industrial Property Bulletin.

Average Processing Times

Registration

Application to publication (of registration): 5-7 months;
Official action: up to 6 months;
Issuance of certificate: 3 months.

Opposition: 3 months

Government Fee Schedule

Official fees (EUR) for:

Preliminary search – 5

Application:
1. One class of goods/services – 40;
1. Each additional class of goods/services – 20.

Registration – 55

Renewal:
1. One class of goods/services – 70;
1. Each additional class of goods/services — 35.

Decision Nr. 883 of May 13, 2009 on Approval of the Official Fees for Registration of Objects of Industrial Property

REGISTRATION FORMS

Information Checklist

The Applicant

  • Full name of the applicant;
  • Full address of the applicant;
  • Correspondence address (if different from the applicant’s address);
  • Phone, fax, email address of the applicant;
  • Legal status of the applicant.

The Mark

  • Graphical representation of the trademark to be registered;
  • Description of the trademark;
  • Type of the mark;
  • Transcription or translation of the mark where it contains letters from an alphabet other than Latin or numbers other than Arab or Latin numbers;
  • Disclaimer request (if applicable);
  • List of the goods and/or services for which the trademark is applied, classified according to the Nice Classification;
  • Priority information (if applicable).

Agents and Service

  • Name of the authorized representative;
  • Full address of the representative;
  • Phone, fax, email address of the representative;
  • Trademark Agent’s registration number (for applications filed by trademark agents).

Registration Forms

Application for registration of a trademark

Form FM1 (English version) – Application for Registration of a Trademark — is the form for filing of an application for registration of a trademark in Albania. The Application Form is approved by the Council of Ministers.

The Application Form should be completed in Albanian.

Information required:

  • Full name, address, contact details, legal status of the applicant;
  • Full name, address, contact details, registration number of the Trademark Agent;
  • Graphical representation of the trademark;
  • Description of the trademark;
  • Type of the mark;
  • Transcription or translation of the mark where it contains letters from an alphabet other than Latin or numbers other than Arab or Latin numbers;
  • Disclaimer request (if applicable);
  • List of the goods and/or services for which the trademark is applied, classified according to the Nice Classification;
  • Priority information (if applicable).

The FM1 form should be supplemented by the following:

  • Payment receipt of the official fee for filing an application and its substantive examination;
  • Power of Attorney authorizing the trademark attorney to act on behalf of the applicant (if the application is filed by the applicant’s representative);
  • A priority request (if applicable);
  • Regulations for use of a collective mark (if applicable);
  • Any other document or declaration that the applicant believes should be considered during the examination of the application.

Power of Attorney

The Power of Attorney form authorizes the Albanian trademark agent to act on behalf of the applicant before the ALPTO.

Information required:

  • Full name and address of the applicant;
  • Name and registration number of the trademark agent;
  • Trademark rights in respect of which the authority to act is granted;
  • Place, date of execution of the Power of Attorney;
  • Full name, position of the signatory and his/her signature.

Important!

A Power of Attorney must be filled in word format (Times New Roman 9).

A company seal/stamp of the principal should be attached to the Power of Attorney. Otherwise, the Power of Attorney should be certified by a public notary.

A separate Power of Attorney should be filed for each trademark.

POST-REGISTRATION

Renewal of Registration

Duration of Protection

The initial registration is effective for 10 years from the filing date. A mark can be renewed for another 10 years, an unlimited number of times, after expiration of the previous period of protection.

Renewal

A request for renewal of a trademark registration should be submitted within six months before the expiration of the term of protection.

After Expiration Renewal

If a renewal request has not been filed within the deadline, the mark can nevertheless be renewed by filing of a late renewal request within a period of six months following the expiration of the term of protection. In case of late renewal, an additional late renewal fee should be paid.

Reinstatement

The Industrial Property Law of Albania does not prescribe a procedure for reinstatement of a mark. Therefore, if a trademark registration expires in Albania, the right to the mark cannot be reinstated.

Advertisement of Renewal

If a request for renewal of a trademark registration is timely filed with the ALPTO and it meets all requirements as prescribed by the Trademark Regulations, the ALPTO will enter the information about renewal of the mark in the State Trademark Register and publish the renewal in the Industrial Property Bulletin.

Alteration or Modification

Correction of mistakes

If the ALPTO issues a document that contains mistakes that were made at no fault of the applicant or the owner of the mark, such mistakes shall be corrected by the ALPTO upon a written request from the applicant or the owner of the mark. Information about correction of a mistake shall, where necessary, be entered into the State Trademark Register and published in the Industrial Property Bulletin.

Corrections To Trademark

A registered mark cannot be altered in the State Trademark Register during the period of its registration or the renewal period.

Corrections To Goods and/or Services

The owner of the mark may file a request for limitation of the list of goods and/or services for which the mark is registered. A payment receipt confirming payment of the respective official fee and a Power of Attorney (where the request is filed by a representative) should be submitted together with the request for limitation of the goods and/or services.

Corrections To Name or Address

Change of the name and/or address of the owner of the mark can be recorded by the ALPTO at the request of the owner. The following should be filed together with the request for recordal of a change of name and/or address:

  • Payment receipt confirming payment of the respective official fee;
  • Power of Attorney, where the request is filed by a representative of the owner of the mark;
  • Official documents confirming the respective changes in the name and/or address of the owner of the mark.

Cancellation of Registration

At Request of Owner

The owner of a registered mark can surrender the mark by filing a respective request with the ALPTO. The surrender can be effected on part or all goods and/or services for which the mark is registered. A request for registration of surrender of a mark should be accompanied by a payment receipt confirming payment of the respective official fee, a Power of Attorney (where the request is filed by a representative of the owner of the mark) and, if a license contract with respect to the mark is registered in the State Trademark Registry, a declaration issued by the licensee confirming that he or she agrees to the surrender of the mark. Information about the surrender of the mark will be published in the Industrial Property Bulletin.

Actions by Court

Revocation of a trademark registration

Upon a request filed by an interested third party, the court shall revoke a trademark registration if the trademark registration has not been put to genuine use in the Republic of Albania by its owner within an uninterrupted period of five years. However, the mark cannot be revoked on this ground if:
* It has been used within the mentioned period of five years by a licensee of the mark or any other person with consent from the owner of the mark;
* It has been used in a form that differs from the registered mark in elements that do not alter the distinctive character of the mark;
* It has been attached to the goods or packaging thereof solely for export purposes;
* It has been used for publicity and in business correspondence.

The court shall also revoke a trademark registration, upon a request filed by an interested third party, if:

  • As a consequence of acts or inactivity of the owner, the mark has become an ordinary (generic) name with respect to the goods and/or services for which it is registered;
  • As a consequence of use of the mark by the owner or with his or her consent for the goods and/or services for which it is registered, the mark misleads the public as to the nature, quality or geographical origin of such goods and/or services.

If grounds for revocation exist with respect to part of the goods and/or services for which the trademark is registered, the trademark shall be revoked partially with respect to those goods and/or services only.

A trademark registration that has been revoked by a court decision becomes revoked from the date such decision on revocation becomes final.

Invalidation of a trademark registration

The court can declare a trademark registration invalid in proceedings initiated upon a claim filed by a third party if the mark has been registered in breach of the provisions of the Industrial Property Law, that is, if the trademark application should have been refused registration on absolute or relative grounds for refusal.

However, if a mark, which at the date of filing of the application was non-distinctive, descriptive, or common in the trade for the goods and/or services it was applied for, acquires a distinctive character through use after its registration, such mark cannot be declared invalid. However, the priority date of the mark shall be shifted to the date when the mark acquired its distinctiveness.

A mark cannot be declared invalid on the ground that there is an earlier conflicting registration if use of the latter mark cannot be proven according to the procedure prescribed by the Industrial Property Law.

Where grounds for invalidation of a mark exist with respect to part of the goods and/or services for which the trademark is registered, the trademark shall be invalidated partially with respect to those goods and/or services only.

Removal of Trademark for Non-Use


See Post-Registration, Cancellation of Registration, Actions by Court, Revocation of a Trademark Registration

Assignments

Rights to Assign

The ALPTO shall register an assignment of a trademark registration upon a request filed by either the assignor or assignee of the mark. A trademark holder is authorized to assign its trademark to a third party with respect to all or part of the goods and/or services for which the trademark is registered. The rights to the mark can be assigned with or without transfer of the business. The assignment of the mark has no legal effect if it is not registered with the ALPTO.

Legal Documents

To record the trademark assignment, the following documents should be filed with the ALPTO by any of the parties to the assignment agreement:

  • Request for recordal of the assignment of the mark (form FM3);
  • Assignment agreement that should have the form of a notary act;
  • Payment receipt confirming payment of the respective official fee;
  • Power of Attorney (where the request for recordal of the assignment is submitted by a representative of the Assignor or Assignee).

Recordation of Assignment

The ALPTO examines whether the request for recordal of an assignment meets the formal requirements as prescribed by the Trademark Regulations. If the request for recordal of an assignment contains any deficiencies or any of the documents that should be filed together with the request are missing or contain deficiencies, the ALPTO will notify the applicant to remedy the deficiencies within a period of three months.

If the request for recordal of the assignment meets the requirements of the Trademark Regulations or the deficiencies in the request or any of the documents that are filed together with the request are remedied within the given term, the ALPTO will register the assignment in the State Trademark Register and notify the applicant about registration of the assignment within six months of the date of filing of the request or within six months of the date the respective deficiencies were remedied by the applicant, as the case may be.

The ALPTO publishes the information about recordal of an assignment of a trademark registration in the Industrial Property Bulletin.

If during examination of the request for recordal of the assignment the ALPTO finds that the assignment of the trademark is likely to mislead the public as to the nature, quality or geographical origin of the goods and/or services with respect to which the trademark is registered/applied for, the ALPTO shall refuse recordal of the trademark assignment.

Licensees or Registered Users

Right to Grant Use

The owner of the mark is entitled to grant use of the mark under a license agreement to any third party with respect to all or part of the goods and/or services for which the trademark is registered. A license can be exclusive or non-exclusive.

Rights of the Licensor

The owner of the licensed mark can exercise the rights granted to him or her with the registration of the mark against a licensee that violates the provisions of the license agreement regarding the term of the license, the form in which the mark can be used, the goods and/or services for which the mark can be used, the territory of the license and the quality of the products produced or the services rendered by the licensee.

Rights of the Licensee

Without prejudice to the provisions of the license agreement, the licensee may bring proceedings for infringement of the mark only if the licensor consents thereto. However, an exclusive licensee shall be entitled to initiate proceedings against an infringer of the trademark rights if, upon receipt of the respective notification, the owner of the mark does not bring infringement proceedings within a reasonable period of time.

A licensee shall, for the purpose of receiving compensation for damages caused by infringement of the trademark, be entitled to intervene in any infringement proceedings brought by the licensor.

Legal Documents

For the purpose of registration of a trademark license, the following should be filed with the ALPTO by any of the parties to the license agreement:

  • Request for registration of the license agreement (form FM4);
  • Trademark License Agreement signed by the Licensor and Licensee;
  • Payment receipt confirming payment of the respective official fee;
  • Power of Attorney (where the request for registration of the trademark license is submitted by a representative of the Licensor or Licensee).

A license agreement shall not be considered valid unless it contains provisions regarding the term of the license, the form in which the mark can be used by the licensee, the goods and services for which the mark can be used, the territory of the license and a quality control provision.

Recordation of License

The ALPTO examines whether the request for registration of a license agreement meets the formal requirements as prescribed by the Trademark Regulations. If the request for registration of a license contains any deficiencies or any of the documents that should be filed together with the request are missing or contain deficiencies, the ALPTO shall notify the applicant to remedy the deficiencies within a period of three months.

If the request for registration of the license meets the requirements of the Trademark Regulations or if the deficiencies in the request or any of the documents that are filed together with the request are remedied within the given term, the ALPTO will register the license agreement in the State Trademark Register and notify the applicant about registration of the license within six months of the date the request met all requirements.

The information about registration of a trademark license is published by the ALPTO in the Industrial Property Bulletin.

RESOURCES

Government Offices

The General Directorate of Patents and Trademarks (the ALPTO)

Blloku Vasil Shanto

Rruga Viktor Eftimiu,

(Godina 5-katëshe e Ish Institutit te Energjetikës)

Kati i katërt,

Tirana, Albania

E-mail: mailinf@alpto.gov.al

Ministry of Economy, Trade and Energy of the Republic of Albania

Address: Blvd “Deshmoret e Kombit“

Tirana 1001

Albania

Tel/Fax: +355 4 223 119

Office of the Minister: Tel: + 355 4 222 7617

E-mail: kabineti@mete.gov.al

Publications

Industrial Property Bulletin

Websites

The General Directorate of Patents and Trademarks (the ALPTO)

Ministry of Economy, Trade and Energy of the Republic of Albania

Industrial Property Law of the Republic of Albania

Legislation of the Republic of Albania on Industrial Property Rights

The Regulations for the Registration of Trade and Service Marks (in Albanian only)

PETOŠEVIĆ

237 appreciate this