Kosovo Appellate Court Confirms National Exhaustion of Rights Is Applicable

On November 7, 2018, the Court of Appeals in Prishtina issued a ruling confirming the right of the trademark holder to ban the unauthorized importation and sale of goods bearing his/her trademark, regardless of the goods’ authenticity and the fact that they were purchased from a dealer authorised to sell them outside Kosovo.

This decision is in line with Article 8 of the Kosovo Law on Trademarks, which states that it is sufficient to ascertain that the importation and placing of the goods on the market occurred without the rights holders’ authorization. However, local case law has been inconclusive and such cases have rarely reached the appellate court. This ruling is significant because it will allow rights holders to invoke it in their struggle against this type of trademark infringement.

In May 2015, the defendant in this case imported apparel goods bearing the trademark of a well-known multinational fast fashion company from Bangladesh to Kosovo. Kosovo customs officials detained the goods, suspecting they were counterfeits. The trademark holder confirmed that the goods were indeed counterfeits, and the Commercial Matters Department of the Basic Court of Prishtina ruled in favor of the plaintiff.

The defendant filed an appeal stating that the goods were purchased from an authorized dealer, but the Court of Appeals ruled that the trademark holder may request third parties to refrain from unauthorized importation and sale of goods bearing their trademark regardless of their authenticity and even if they were purchased from an authorized dealer. The court underlined that Kosovo applies the principle of national exhaustion of rights and that, in case at hand, plaintiff’s trademark rights are exhausted only if the plaintiff places the goods on the market.

By: Đorđe Marković

For more information, please contact Đorđe Marković.