ALBANIA: New Trademark Regulation Aims to Clarify Range of Issues

Oct 9 2018 - 15:56

A new trademark regulation that entered into force in Albania on June 7, 2018, has clarified a range of issues brought about by the March 25, 2017, changes to the Albanian Industrial Property (IP) Law.

The regulation enables claimants to act quickly in that it allows them to file a formal action by completing the standard form and paying the fee within three months from publication of the contested mark in the Official Bulletin for opposition proceedings, and within five years from the mark’s registration date for cancellation actions. Claimants can then file supporting documents and arguments within two months after receiving an invitation from the General Directorate of Industrial Property (GDIP) to complete the file. Applicants and rights holders also have two months following the GDIP’s notification to then complete their response. The previous regulation provided a one-month deadline for both parties.

The possibility to file a formal action by completing the form and paying the fee, and to complete the file afterwards, exists only in proceedings before the first instance of the GDIP, the Examination Division. In case of an appeal against the first instance decision before the GDIP Appeal Board, the appellant should file arguments and supporting documents within one month of being notified of the first instance decision.

The clarification of these procedural rules is expected to relieve the backlog of oppositions, cancellations, and appeals caused by the GDIP’s stagnation after the IP law changes entered into force in March 2017. This backlog was caused by the lack of detailed rules about procedure before the GDIP, which were expected to be defined by the new trademark regulation.

The regulation permits applicants to request the restitutio in integrum (restoring the application’s status) procedure if they failed to perform a certain action by a certain deadline for justified reasons and despite due diligence. This request must be filed within 60 days of the removal for noncompliance and no later than one year after the expiration of the missed deadline, and is subject to the payment of a fee. Restitutio in integrum does not apply to opposition and cancellation proceedings held before the Examination Division, to appeals against decisions in these proceedings filed before the Appeal Board, or to restitutio in integrum requests.

In terms of other significant changes, the regulation provides clearer definitions and representation requirements for the most common traditional and nontraditional marks. It also adopts the literal approach in interpreting class headings, so that goods not specifically mentioned in the class heading are not included in the protection.

Article 22(8) of the regulation contains a definition of an identical sign that does not limit the term to its literal meaning. Specifically, it says that “signs should be considered identical where, when viewed as a whole, they are not differentiated, or contain insignificant differences.”

Last, the regulation specifies that, when determining whether a mark is well known, the Albanian authorities should take into account the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks adopted by the World Intellectual Property Organization (WIPO) in September 1999. Having the WIPO criteria specified as binding by the regulation will contribute to establishing steady practice.

By Irma Cami, Of Counsel, PETOŠEVIĆ Albania

This article first appeared in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).

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