New trademark implementation rules have been adopted

The bylaw on Trademark registration procedure which entered into force on August 15, 2023 intends to streamline the procedures and practices of the Kosovo IP Agency, in particular regarding examination on absolute grounds, handling of the oppositions/invalidations filed on the basis of (unregistered) well-known trademarks and bad faith grounds as well as use of alternative dispute mechanisms during the opposition procedure.
Namely, the IP Agency may on its own initiative:

  1. Refuse registration of a trademark ex officio if during the examination procedure it assesses that the application was submitted in bad faith, or it includes a well-known or internationally reputable trademark registered in international database
  2. Conduct a review of the examination process concerning the absolute grounds for refusal as defined in Article 6 of the Law on trademarks, either prior to or following the registration of the trademark, in accordance with the regulations of the Law on General Administrative Procedure.

When refusing a trademark registration on bad faith grounds as well as based on (unregistered) well-known trademarks, the IP Agency will now refer to the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks and the list of factors recommended by the INTA Board Resolution on Bad Faith Applications and Registrations.

Further aspects introduced by the bylaw on trademarks concerned:

  1. Negotiation procedure: The parties have the option to submit a request to the IP Agency to temporarily pause the opposition procedure while they work towards resolving the dispute amicably.
  2. Judicial review of the decisions on oppositions: In an opposition procedure, if one of the parties requests judicial review of the decision rendered by the Commission of Appeals when acting as the second administrative instance, they are required to notify the IP Agency about the legal action within 30 days. Filing the lawsuit will automatically suspend the enforcement of the IP Agency's decision until a final judgment is issued by the Commercial court.

For more information, please contact info@ip-legals.com

Published : 23 November 2023

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