Safeguarding IP rights in Kosovo: the crucial role of trademark monitoring

Author: Florin Lata (This article was primely published in World Trade Review)

• The illicit registration of well-known brands is a signi cant problem in Kosovo
• The Industrial Property Agency has published administrative guidelines for trademark registration to tackle this issue
• However, the agency often lacks the necessary tools to distinguish well-known brands, and genuine rights holders fail to oppose such applications

Background
In a context of ongoing development in the global market, Kosovo, like many other states, faces a significant challenge: the illicit acquisition of well-known brands. Exploiting the reluctance of many multinational companies to register their trademarks in Kosovo, some entities – both local and foreign – are registering internationally recognised brands in their own name. In recent months, there has been a trend of registering well-known brands aimed at a speci c audience, such as truck parts and food products. After obtaining the trademark registration certifcate, these entities commit to producing or importing goods into the Kosovo market, and it is highly likely that they will then transport the goods into EU countries.

This harmful practice is made possible mainly by Kosovo’s non-participation in the Madrid Protocol, which means that the country is often forgotten by large international companies.

New guidelines
In response to this urgent problem, the Industrial Property Agency of Kosovo has published administrative guidelines for trademark registration. These guidelines, outlined in Article 10(12), emphasise the importance of carefully reviewing applications for well known or internationally renowned marks. Any indication of abuse will justify the rejection of the application.

Obstacles and solutions
However, current circumstances deviate from regulatory intent. The agency often lacks the necessary tools to distinguish well known brands or to access relevant information to identify them. Thus, the absence of opposition from the genuine rights holders often due to a lack of information – has resulted in the unhindered registration of these marks. The insidious practice of abuse thus continues unchecked.

The Trademark Law also provides for the possibility of revoking a registered trademark, but the decision-making process is lengthy, and until the Industrial Property Agency makes a decision, a trademark registered in bad faith will remain valid.

To address this challenge effectively, trademark monitoring measures must be regularly implemented in Kosovo. Such proactive approach involves monitoring new trademark lings and identifying suspicious cases, particularly those linked to well-known trademarks.

Comment
In an era characterised by interconnected markets and ferce competition, the protection of IP rights is of paramount importance. The importation of goods bearing trademarks irregularly registered in Kosovo presents serious risks of illicit exploitation in other markets, thereby endangering not only the local Kosovar economy, but also – given Kosovo’s strategic geographical position – the integrity of the European common market.

Safeguarding renowned trademarks and preventing abuse during their registration requires the implementation of vigilant trademark monitoring, as well as the enactment of additional legal measures to reduce illicit business practices.