INTA's Trademark Reporter Albania case summary - Infringement of Unregistered Trademarks (FIAMM vs FIAM/FIAMM)
By Irma Cami, published in the March/April 2012 edition of the IAR Trademark Reporter
The First Instance Court of Tirana ruled (Decision No. 5796 of July 1, 2011) in a case brought by the Italian company FABBRICA ITALIANA ACCUMULATORI MOTOCARRI MONTECHIO (FIAMM), S.p.A, holder of the FIAMM mark, which is not registered in Albania, against the Albanian company MBA, Ltd., holder of the two registered marks FIAM and FIAMM. The court acknowledged that, while the plaintiff does not have a FIAMM mark registered in Albania, it recognized the status of the plaintiff’s mark as well known, and ruled in accordance with Article 6bis of the Paris Convention and the provisions of the Albanian IP Law. (Law No. 9947 of July 7, 2008, “On Industrial Property,” provides for the holder of an unregistered well-known mark to have the same rights as the holder of a registered mark.)
It was established at the proceedings that the disputed marks covered identical goods, and it was assessed that the signs were confusingly similar to each other (FIAMM vs. FIAMM and FIAMM vs. FIAM). Therefore, the main questions that dominated the discussion between the parties, as well as the analysis of the court, were:
- What constitutes a well-known mark? * Is the plaintiff’s mark in this particular case well known?
In determining these criteria, the court referred to the Albanian IP Law provisions. (Article 145(5)(ç) of the Albanian IP Law states that “a trademark is well-known when it is recognized by the relevant public because of its use, advertising, promotion.”) The law also obligates the Albanian Directorate of Patents and Trademarks to issue detailed guidelines defining the criteria under which a mark should be deemed well known, emphasizing that these guidelines should be based on the criteria issued by the international authorities (WIPO recommendations, September, 1999); however, the Directorate of Patents and Trademarks has not issued such regulations yet. The court tried to analyze such criteria by explaining the concept of “the use and advertising of a mark” as follows: “The use of the mark in the market should be extensive and it should have been present in the market over a considerable period of time, whereas with regards to the advertising of the mark, all types of advertising will be taken into consideration as evidence, such as, traditional advertising, posters, leaflets etc.” The court further stated that a mark that has been used in the market for more than ten years is eligible to be defined as a well-known mark.
Despite the shortcomings in these proceedings—such as the court not establishing basic criteria for defining a well-known mark and the court’s lack of consideration of the WIPO recommendations issued in September 1999—this case is the first attempt in Albanian judicial practice to interpret and establish criteria for what constitutes a well-known mark.
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