New Regulation on Trademarks Registration in Albania

Recently, the Council of Ministers approved the Regulation “On Trademarks” via decision no. 315 as of 31.05.2018, aiming to regulate certain issues provided by the law “On Industrial Property” regarding trademarks procedures followed by the General Directory of Industrial Property. This Regulation repeals the previous one of 2008, is much more detailed in scope and provides guidance on matters that were not previously regulated.

 

Classification of Trademarks

For the first time, the regulation classifies trademarks in 7 categories: word trademarks, figurative/logo trademarks, shape trademarks, position trademarks, trademarks with repetitive elements, color trademarks and other trademarks which do not fall under any of the abovementioned categories. Furthermore, the regulation also provides collective marks, used by more than one person and certification marks which assure that certain products falling under a certain trademark, meet certain standards.

 

Trademarks’ registration

The regulation introduces detailed rules on trademarks’ application and registration procedures on each type of trademark and the procedure for the opposition of registration, trademark protection and exemption form protection.

Depending on the type, the application for a trademark registration shall be accompanied by an objective graphical presentation of it. A list of goods and services that fall under the protection of a certain trademark shall be attached to the application for the required protection to be clarified.

All trademarks are registered in the trademarks register, which provides data for all protected trademarks. Some of them are also disclosed and made publicly available for third parties. The regulation also provides the international registration of trademarks and the right of applicants for priority.

 

Criteria for well-known trademarks

Noteworthy, the Law on Industrial Property recognizes well-known trademarks. However, to date, there was no guidance for the General Directorate of Industrial Property and interested parties regarding the criteria to be used for determining whether an unregistered mark is ‘well-known’. The new Regulation finally fills in the gap by adopting the following criteria for the determination on whether a trademark shall be considered as such: 

  1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
  2. the duration, extent, and geographical area where the mark is used;
  3. the duration, extent and geographical area where the mark is promoted (by means of advertising, publicity, expos etc);
  4. the duration, extent and geographical area of any registration or application for registration of the mark to the extent that these reflect the use or recognition of the mark;
  5. the successful track record of enforcement of rights pertaining to the mark;
  6. the value associated with the mark.

Additional criteria not listed above may be also be considered by the GDPO considered. Furthermore, the specific circumstances of each case will be decisive in the evaluation process.

The implementation of such regulation contributes in filling the existing legal gaps and in easing the application of the provisions of the law by the competent authorities for the protection of industrial property rights.

New tariffs applied for applications in relation to trademarks.

In the same date, upon its publication in the Official Gazette No.82, dated 6 June 2018, decision no.316/2018 “On some amendments and additions in the DCM nor.883/2009 “On approval of the registration tariffs for the objects of industrial property as amended, became effective.

The decision introduces a list of tariffs for various applications that deal with trademarks, patents and other services provided by the GDPI. Accordingly, the application tariff for the registration of an individual trademark is 7000 ALL and any additional class will cost 2500 ALL. The trademark registration fee is 8000 ALL and for opposing such decision, a tariff of 7000 ALL shall be charged. The list attached to the decision, provides the applicable tariffs for all services and applications with the GDPI as for example registration of amendments in the trademarks registry, replication of a trademark, trademark depreciation etc.

Contact:

Anisa Rrumbullaku, Partner                 a.rrumbullaku@crpartners.al

Tea Take, Associate                                    t.take@crpartners.al

The information provided in this newsletter is general in nature and does not constitute legal advice. CR PARTNERS SHPK cannot assume any liability in respect thereof. Before entering in commercial transactions, professional legal advice should be sought.