Bayer Victorious in Trademark Dispute against Kosovo Pharmacy

In February 2014, the Appellate Court of Prishtina ruled in favor of German pharmaceutical company Bayer AG in a trademark infringement lawsuit against a local Kosovo pharmacy operating under the name DPF Bayer. The Appellate Court’s decision is final and not subject to appeal.

In March 2011, Bayer AG initiated the lawsuit at the Commercial Court in Prishtina (now Basic Court of Prishtina, Department of Commercial Matters) arguing that the defendant’s use of the mark Bayer as a trade name and a service mark constituted trademark infringement. Bayer AG also filed a separate claim on the basis of infringement of a well-known trademark.

At the time of filing the lawsuit, Bayer AG held several international registrations extended to former Yugoslavia and/or Serbia, which were subsequently re-registered in Kosovo during the revalidation period.

The defendant argued that the plaintiff had no capacity to sue because the plaintiff had no business registration in Kosovo, i.e. the defendant did not make a distinction between a trademark registration and a business registration.

The defendant also referred to the Article 14.3 of the (now former) Law on Trademarks, according to which no infringement proceedings may be initiated before the date of publication of trademark registration, i.e. the revalidation procedure for Bayer AG’s international registrations had not been completed before Kosovo’s PTO at the time Bayer AG filed the lawsuit. However, the court permitted Bayer AG to file the lawsuit because of Bayer AG’s international registration with WIPO.

Furthermore, the defendant argued that the plaintiff had acquiesced in the defendant’s use of its trademark claiming that Bayer AG had not opposed the use of its mark for more than five successive years.

In June 2011, the Commercial Court ruled that although the plaintiff had the capacity to sue and is entitled to trademark protection under Kosovo’s trademark law, the plaintiff cannot ask the defendant to cease using the mark because, as per Article 49 of the Law on Trademarks no. 02/L-54 (now repealed), the plaintiff tacitly approved the defendant’s use of the mark. The court did not provide any further details as to why the conditions laid down by Article 49 were considered relevant in the dispute.

The Appellate Court canceled the decision of the Commercial Court stating that the Article 49 applies only to cases where the plaintiff acquiesced to the use of the trademark – not the trade name. For that reason, the Appellate Court ruled that the first-instance court should not have accepted the defendant’s acquiescence defense in this case. In other words, the pharmacy was registered according to the Law on Business Organizations, which makes the Article 49 of the Law on Trademarks inapplicable to this case.

Prepared by: Jelena Jankovic

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