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Albanian Courts Show Willingness to Follow CJEU Criteria in Trademark Cases

Jul 31 2015 - 12:44

In two recent decisions issued by the Administrative Appeal Court of Tirana and the First Instance Court of Tirana, both courts found the CJEU criteria as an important source for the Albanian trademark practice. Although these courts ruled in different procedures – a trademark opposition procedure, which ended up before the Administrative Appeal Court of Tirana, and a cancellation action based on prior rights initiated directly before the court – in terms of substantive law, they addressed the same IP–related issues rarely deliberated on by Albanian courts.

One of the issues that the courts raised was the criterion for determining what constitutes a well-known mark and whether the opposing marks were well known in Albania. Both petitioners claimed the well-known trademark status and submitted the evidence on use and advertising expenses dating back 20 years. The evidence was found sufficient to establish the well-known status and according to both courts, a trademark used for more that 10 years in market is eligible to be considered well known. Further, despite any shortcomings in the courts’ reasoning, both courts explicitly referred to the WIPO’s Recommendations Concerning Provisions on the Protection of Well-Known Marks of September 1999, considering it as a main guide in assessing whether a mark is well known.

Another issue that was thoroughly discussed before both courts was related to the comparison between word and device marks. According to both courts, when signs consist of both verbal and figurative components, in principle the verbal component of the sign usually has a stronger impact on a consumer than the figurative component, unless the figurative element is visually outstanding. This is a new development in the Albanian trademark practice, which is in line with the EU case law.

The question of whether unfair competition constitutes another (broader) legal ground that may be used against trademark infringement was answered positively by the First Instance Court of Tirana. Besides likelihood of confusion, the plaintiff in this case based the claim on the unfair competition provisions. In addition to the similarities between the marks, the plaintiff argued the similarities between the packaging of the products. After analyzing the similarities in packaging, the court ruled that the similarities, e.g. the size and shape, can be taken into account while deciding on unfair competition, and therefore satisfied the plaintiff’s unfair competition claim. It is another interesting ruling, taking into account the lack of unfair competition case law in Albania.

Even more importantly, all authorities in charge of examining these particular cases followed the CJEU criteria, acknowledging them as an important source for the Albanian trademark practice. This approach is a remarkable step forward in the Albanian court practice, since the courts have ruled on likelihood of confusion entirely on the basis of expert opinions, experts usually being the PTO examiners.

Even though these decisions of the First Instance and the Appellate Court are not binding for other courts, in the sense of a precedent of the Common Law, they are significant as they pave the way for further consideration of the importance of the CJEU’s rulings by the Albanian Supreme Court.

The decisions can be appealed before the Appellate Court of Tirana and the Supreme Court of Tirana, respectively.

By: Irma Cami

For more information, please contact Irma Cami at our Albania office.

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