Industrial Property Protection in Albania, Trademarks

Odeta_photoIndustrial Property Protection in Albania

Legal Basis:                        

  • Conventions:
    – TRIPs
    – Paris Convention
    – Madrid Agreement
    – Madrid Protocol
    – Nice Agreement
    – PCT Convention
    – Patent Law Treaty
    – European Patent Convention (EPC)
    – Hague Agreement concerning the International Registration of Industrial Designs
    – Locarno Agreement
  • Law No. 9947, dated July 7th , 2008 “On Industrial Property”

–         Implementing regulations:

  • Decision of Council of Ministers no.1706, date 29 December 2008 “On the approval of the regulation on the registration of trademarks of goods and services”;
  • Decision of Council of Ministers no.381, date 08 April 2009 “On the approval of the regulation on the registration of industrial designs”;
  • Decision of Council of Ministers no.1707 date 29 December 2008 “On the approval of the regulation on the grant of patents for inventions and utility models”;
  • Decision of Council of Ministers no.883, date 13 May 2009 “On the approval of fees on Industrial Property Objects”

Trademarks in Albania

1.1               National Legislation

The main source of trademark law is Law no. 9947 dated 07.07.2008 “On Industrial Property” (hereinafter “Law 9947”), which covers almost all substantive and procedural issues with regard to trademarks.  As Law 9947 is so recent it has taken into account and incorporated most of the regulations provided for in the international treaties on trademarks Albania has become a part of.

Other sources are Law no. 9902, dated 17.04.2008 “On consumers’ protection” (“Law 9902“) which has many provisions regarding the protection of trademarks (misleading practices, unjust commercial practices, comparative publicity); Law no. 9901, dated 17.04.2008 “On Entrepreneurs and Commercial Companies” (registered names and commercial labels) (“Law 9901”); Albanian Civil Code and Law no. 9723 dated 03.05.2007 “On the National Registration Center” (“Law 9723”).

1.2               Protected Signs/Registered Signs

Law 9947 provides the definition of a sign that may be registered as a trademark.  According to law, “every sign or combination of signs that can be presented graphically that serve to distinguish goods or services of a person from those of another person, can be registered as a trademark”.  Such signs may be words, letters, numbers, abbreviations, figurative signs, drawings, two- or three-dimensional forms, forms of goods and/or their wrapping, colors shades and their combination, colors per se.  When it comes to marks that are presented graphically, this regards particularly, but not only, special types of marks such as voice and light signals.

Under law, national flags and coats of arms cannot be protected as trademarks.

Law 9947 recognizes two types of trademarks.  Unlike an individual trademark, a collective mark protects a sign that is used to distinguish goods and/or services put into the market by a commercial or industrial collaboration, by a society or similar body of various subjects.

Hence, every sign to be registered as a trademark shall fulfill two cumulative conditions:

(i)                  Graphical representation;

(ii)                Distinctiveness in the market from other competitors

1.3               Registration Purposes/ why should be signs protected as trademarks?

By registering a trademark YOU:

a)      obtain the exclusive right of ownership over the mark;

b)      get a “priority date/ an earlier date of registration” compared to other subjects which have not registered their sign yet;

c)       gain legal rights on the basis of which you interrupt any unauthorized use of the mark;

d)      identify and distinguish your goods and/or services in the market from those of other competitors, by giving them an identity of origin;

e)      establish a unique relationship between the mark and its trade origin (trinomial of the trademark – trade origin – a set level of quality);

f)       will legally protect your reputation and good name created in the market regarding the produces/services you offer;

g)      inform the public of the existence of a trademark ownership;

h)      obtain legal rights such as: court proceedings, customs mediation to block fake commodities, etc.;

i)        facilitate the procedures of franchising, licensing, changing of name/address of the trademark owner etc.

1.4               Responsible Authority for the registration of Industrial Property objects in Albania?

The Albanian Patents and Trademarks Office (hereinafter referred to as “ALPTO”) is the public authorized authority in Albania for the protection and registration of Industrial Property objects.

As above stated, Law 9947 and its Regulations constitute the legislative framework for registration through all its processes, examination, recording and protection of Industrial Property Objects in the Republic of Albania.

The registration of a trademark goes through several processes with ALPTO and requires the observation of legal deadlines.

Protection for a trademark starts with its registration (article 144 of Law 9947).  The registration of a trademark lasts for 10 years, starting from the filing date.  A trademark may be renewed endlessly for ten-year-periods, after the owner of the mark files a request with APTO.  The new period for protection of the trademark begins from the end date of the previous ten-year period of protection. If the owner of a trademark does not file a request for its renewal or does not pay the respective tariff, the mark in question becomes invalid (article 164 Law 9947).

The request for renewal should be filed with ALPTO within six month before the date in which the protection term ends.  The expiring date for the protection of the trademark is the last day of this term.  If the request is not filed within this period, it can be filed within an additional time period of six months from the expiring date of the protection of the trademark, with an additional fee payment.

The registration process of a trademark consists of two important phases:

PHASE I

–          Request for a trademark search; the application request and the examination of absolute grounds of refusal (3 – 6 months);

PHASE II

–       Examination of relative ground of refusal (publication of the trademark in ALPTO Official Gazettes and the start of opposition period and trademark registration (6 – 9 months).

At the end of the process, you receive the Trademark Registration Certificate, which proves ownership on the trademark. This right is unlimited because according to law you have the right to renew it for 10-year periods.

1.5          Filing the Application – Requirements

  • Name and Address of the Applicant;
  • Representation of the Mark;
  • List of Goods and Services according to Nice Classification 10th Edition (Classes 1-45);
  • Priority date, country and number if there any. The priority document can be submitted subsequently within three months as from the date of the submitted request with ALPTO;
  • Power of Attorney (POA)

– If the applicant is a Natural Person – The POA should be signed by the applicant and duly notarized and legalized (or apostilled);

– If the applicant is a Legal Person – The POA should be signed by the Authorized Representative of the Company and should bear the Company seal (or stamp).
POA should be submitted within three months as from the date of the receipt of the official notification;

  • The document concerning rules of Trademark usage, in case of Collective Marks

1.6          Recording changes in the Register

A.            Assignment of rights Requirements

  • The Power of Attorney simply signed by the Assignor or Assignee

– If the applicant (Assignor or Assignee) is a Natural Person – The POA should be signed by the applicant and duly notarized and legalized (or apostilled).

– If the applicant (Assignor or Assignee) is a Legal Person – The POA should be signed by the Authorized Representative of the Company and should bear the Company seal (or stamp).
POA should be submitted within three months as from the date of receipt of the official notification

  • Assignment document – signed by the Assignor and the Assignee and duly notarized by Notary Public, should be submitted within three months as from the date of receipt of the official notification

B.            Change of name Requirements

  • Power of Attorney indicating the new address

– If the applicant is a Natural Person – The POA should be signed by the applicant and duly notarized and legalized (or apostilled)

– If the applicant is a Legal Person – The POA should be signed by the Authorized Representative of the Company and should bear the Company seal (or stamp)

  • The document certifying the change of name of the trademark Owner – should be submitted within three months as from the date of receipt of the official notification

C.            Change of address Requirements:

  • Power of Attorney indicating the new address

– If the applicant is a Natural Person – The POA should be signed by the applicant and duly notarized and legalized (or apostilled).

– If the applicant is a Legal Person – The POA should be signed by the Authorized Representative of the Company and should bear the Company seal (or stamp)

D.            Registration of the Licensing Agreement Requirements

  • Power of Attorney

– If the applicant is a Natural Person – The POA should be signed by the applicant and duly notarized and legalized (or apostilled)

– If the applicant is a Legal Person – The POA should be signed by the Authorized Representative of the Company and should bear the Company seal (or stamp)

  • The license Agreement – should be in a written form, signed by the two parties and duly notarized. Translation of license agreement into local language can be filed within three months as from the receipt of official notification.

 

Author: Odeta Agovi – Authorized Representative
Tirana, Albania
e-mail: odeta_agovi@nullyahoo.com