Protecting Your Trademark Portfolio in the South Eastern Mediterranean

by Vladimir Nika, SD PETOSEVIC, Albania and Kathryn Szymczyk, SD PETOSEVIC, Balkan Regional Office

Albania shares a border with Greece to the south, The Former Yugoslav Republic of Macedonia (FYRM) to the east, and Serbia and Montenegro to the north. To the west, the country is strategically located on the Strait of Otranto, which links the Adriatic Sea to the Ionian and Mediterranean seas. It has been used for centuries as a desirable trade route from the sea, into the Balkans, and from there, to the rest of Europe. Its favourable position for trade means that it has naturally become a popular transit area for counterfeit products destined for Europe. As such, the country is an important jurisdiction for trademark owners looking to protect their trademark rights in Europe. Since the fall of communism in 1991, Albania has been struggling to make the difficult transition to a free market. Recently, the country has seen significant improvements to its infrastructure and, the new government elected in 2005, promises to fight corruption and establish a better legal framework to attract foreign investment and to prepare the country for the much coveted integration into the European Union (EU) and NATO.

Protection of IP Rights

The reform of intellectual property legislation in the late 1990s in Albania was a significant step towards the harmonisation of the countries laws with the international intellectual property system. 1

The current Industrial Property Office of Albania (IPO) was established pursuant to the resolution of the Council of Ministers (No. 313), on 13 June 2000. In the 1990s, Albania also moved to join important international treaties, agreements and conventions regarding intellectual property such as the Madrid Agreement (in 1995), the Paris Convention (in 1995), the Patent Cooperation Treaty (in 1995), the Protocol Relating to the Madrid Agreement (in 2003), the Berne Convention (in 1994) and others. Albania is also a member of the World Trade Organisation (WTO) (A Member and signatory of the TRIP’s Agreement, in September 2000), WIPO and is an “extension state” under the Extension of European Patents Agreement (as of February 1996).

Trademark Registration

Albania is a first to register country and trademark owners have few rights without registration. The procedure for registering a trademark in Albania is similar to the procedure in most jurisdictions. Once registered, the registration is valid for 10 years (from the date of application) and is renewable for subsequent 10 year periods. In 2005, with the growth of the local economy in Albania, trademark registrations by foreign companies rose to 800, which is at least double the number of such registrations in previous years. These figures show that the macro economy in Albania has stabilized and is growing rapidly. It takes approximately a year from the filing date to obtain a trademark certificate, provided there are no serious obstacles. A preliminary examination is conducted by the IPO to determine whether the application complies with the formal requirements of the law. A substantive examination is then conducted, but not as to similar prior rights. No opposition proceeding is currently available.

Trademarks may be cancelled on absolute or relative grounds at any time during their entire period of validity upon a decision of the competent Court. Revocation of a trademark is also possible through a Court action if it is not used during a continued period of three years (after the amendment of 1999).

Licenses must be recorded at the IPO and the licensor must ensure effective control of the quality of the goods or services.

Trademark Enforcement

Under the trademark law of Albania, the owner of a registered trademark has the right to institute legal proceedings against any person or entity that has infringed or is infringing his/her rights under the law. The owner has the same rights against any person or entity that has performed acts or is performing acts that make it likely that such infringement will occur (imminent infringement). Where a plaintiff successfully proves that infringement has been committed or is being committed, the court may order an injunction to prevent further infringement and may award damages, including the value of the infringer’s profits and the material injury to the right holder, as well as legal costs.

Where the trademark owner proves imminent infringement, the court will grant an injunction and may grant any other remedy provided for by the law. Although injunctions are possible, as noted above, it is quite difficult to obtain them from the Court since there are no specialised Judges in the IP field and, as such, there is a lack of understanding of what is required for effective enforcement. Damage claims must be very well grounded, and it is preferable to use documentary evidence, such as a license agreement or a contract between the alleged infringers. Damages over 15,000-20,000 Euros are very difficult to obtain in a trademark infringement matter, however, should the evidence be
sufficiently clear, there is no legal provision establishing a ceiling for a damage claim. It is also possible to obtain evidence from alleged infringers through discovery. A minimum of 5 to 8 hearings is necessary before the Court reaches a judgment, but of course it
varies depending on the circumstances. An appeal from a court decision may be filed within one month of the decision to the Appeal Court of Albania.
by Vladimir Nika, SD PETOSEVIC, Albania and Kathryn Szymczyk, SD PETOSEVIC, Balkan Regional Office

Customs Enforcement

As other countries in the Balkan region, for some years now, Albania is facing significant traffic of counterfeit products through its ports and borders. Many of these products originate in Asia and are destined for the European Union. Clearly, the geographical position of Albania makes it a convenient transit country. The corruption among Albania Customs Officials also increased the countries popularity as a trade route for counterfeit
products. Albania has numerous customs points including one international airport, eight land borders (2 with Montenegro, 1 with Kosovo, 2 with Macedonia and 3 with Greece) and 4 ports (with Durres (Durazzio) seeing 90% of the importation of maritime goods coming into the country).

In 1999, the Albanian government adopted the Customs Code Law (No, 8449) that includes provisions giving Customs the authority to act in case notice of an imminent infringement (eg. shipment containing counterfeits) is received by the Customs authorities. It is not yet possible to request general monitoring measure for a trademark.

With the new government program against corruption and the continuing assistance of the EU to computerise the customs system, it is beginning to be possible for trademark owners to successfully enforce their IP rights at the borders to prevent counterfeit goods from entering Europe.

Notes
1 Law on Industrial Property (No. 7819/1994 of 27 April 1994 as amended by Law No. 8477/1999 of 22 April 1999), Criminal Code, Civil Code, Criminal Procedure Code, Civil Procedure
Code, Customs Code (No. 8449/1999), Law on “Protection of Topographies of Integrated Circuit” (No. 8488/1999), Law on Competition (No. 8044/1995), Regulation 393/1998 “On Registration of Drugs in the Republic of Albania” (supplemented June 8, 1999), Regulation on the Commission
of the Verification of the Manufacturing Conditions of Pharmaceuticals (No. 2976/1998), Law “On Copyright” (No. 7564/1992) (as amended on April 19, 1995 (No. 7923), April 6, 2000 (No. 8594), July 3, 2000 (No. 8630).