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All civil litigation concerning trademarks follows the rules prescribed by the Civil Procedure Code, whereas criminal law actions concerning trademarks follow the rules prescribed by the Criminal Procedure Code, except where the Law on Industrial Property provides for special rules.
Causes of Action
Trademark litigation disputes can be of an administrative, civil or criminal perspective. Specifically, in an appeal filed against the administrative decisions of the Industrial Property Directory (IPD); in civil disputes where the litigation can be initiated directly before the court; or in criminal matters arising due to a criminal complaint (except ex officio actions from competent authorities).
During the publication period in the bulletin of the IPD, the interested parties may challenge the registration of the trademark on the basis of the relative grounds for refusal (i.e. earlier rights) before the Chamber of Oppositions. The decision of the latter may then be challenged before the Board of Appeal within one months from the date of notice on the decision of the Chamber of Oppositions. The decision of the Board of Appeal may be challenged before the competent court within 45 days.
Violation of IP rights may be challenged before the civil courts, unless such violation is considered a criminal contravention under the Criminal Code. Damages and available remedies will be elaborated below.
Trademark owners are entitled to bring an infringement action against any third party who is infringing their exclusive rights. In practice, IP right owners are advised to send a warning letter (i.e. cease and desist letter) before commencing an infringement action. Exclusive licensees are also entitled to bring an infringement action, whereas non-exclusive licensees and distributors may be entitled depending on the contractual arrangements in place with the trademark owner. Those who have carried out the infringing activities, as well as those who have participated in the distribution of the infringing goods, could all be subject to being sued.
Invalidity and Revocation Proceedings
Interested parties may seek the invalidation and revocation of trademarks. Invalidation may be claimed based on absolute (particularly if it was non-distinctive or descriptive) and relative grounds for refusal (violation of earlier rights), as well as applications in bad faith.
On the other hand, revocation can be claimed in absence of use for five years following the trademark registration. This can happen if, as a consequence of the acts of the proprietor, the trade mark has become the common name for a product or service for which it is registered and the proprietor has not taken sufficient measures to prevent this. This could also occur as a consequence of the use made of it by the proprietor, a trademark has become misleading as to the nature, quality or geographical origin of the goods and services for which it is registered.
Until the amendments introduced in 2017, invalidation and revocation of trademarks could only be claimed before the court. Currently, the Law on Industrial Property provides that the invalidation and revocation can be claimed before the Invalidation/Revocation Chamber near IPD, unless there is an ongoing proceeding before the court for the same matter.
The Court System and Litigation Venues Explained
The civil court system is organised in the following structures:
(i) District Courts;
(ii) Courts of Appeal; and
(iii) the Supreme Court.
There are two levels of appeal: (i) the Courts of Appeal; and (ii) the Supreme Court.
The District Courts are organised in specialised sections for allocation of the particular cases according to the subject of the claim, such as section for civil disputes, section for family law disputes, and section for commercial disputes.
Administrative courts are organised as: (i) Administrative Courts of First Instance; (ii) the Administrative Court of Appeal; and (iii) the Administrative College of Supreme Court. However, administrative courts only handle lawsuits filed against the decisions of the IPD.
Trademark litigation (with private parties) is generally handled by the section for commercial disputes of Tirana First Instance Court. Albania lacks specialised IP jurisdictions and current system provides different courts with jurisdiction over IP disputes with unclear and sometimes overlapping subject matter as the basis for determining jurisdiction.
This creates confusion as to the correct forum, as well as inconsistencies in the practices of different courts in relation to the same or similar IP matter. This has been the case of many disputes brought before the courts that have caused an extensive duration of the court’s proceedings, adversely affecting the position of the parties.
With preliminary injunctions, the court may:
a) impede imminent infringements or infringements that have started;
b) prohibit the entry of the goods into civil circulation;
c) order the preservation of relevant evidence in respect of the alleged infringement, subject to the protection of confidential information;
d) seize, take out of circulation or take under control, for the period of the proceedings, the items that constitute infringement or the means used for the production of the items that constitute infringement; or
e) order, in the case of an infringement committed on a commercial scale and if the injured party demonstrates circumstances likely to endanger the recovery of damages, the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of bank accounts and other assets.
Damages and Compensation
Provided that the infringing activity has caused any economic (e.g., loss of profit) or non-economic (e.g., loss of reputation or garnishment of the commercial image of the company) detriment, the court may award the plaintiff with damages relief consisting of the damage suffered plus loss of profit is available. Also, moral damages, if claimed, are liquidated if deemed necessary by the court.
The court, when appointing the level of compensation:
a. takes into consideration any effective and actual damage, including the lost profit incurred by the damaged party, any unfair profit realized by the infringer, resulting from unfair competition and, in cases, the moral damage incurred by the holder of the rights due to infringement, the damage to his good will or reputation, etc.;
b. as the case may be, it can decide for the immediate compensation of the damage by calculating the profits that would be collected or gained in case the infringer would have asked the authorization for the use of the concerned industrial property right. Pursuant to Albanian Criminal Code, the intentional manufacturing, possession for commercial purposes, selling, offering to sell, supplying, exporting or importing of goods or services covered by a trademark without the consent of the trademark owner constitutes criminal contravention punishable with a fine or by imprisonment up to one year.
The costs of the civil proceedings are attached to the losing party.
With the final decision, the court orders:
a) seizure of goods/services that infringe of the IP rights;
b) removal or seizure of the materials, equipment, instruments and measured used mainly for the creation and production of infringing goods or services;
c) in relation with counterfeits, the removal of the attached trademark per se is not sufficient, unless for specific cases to allow the trading of these goods;
d) publication of the final decision of the court in the public media at the expense of the infringer as prescribed by the court.
Investigations and First Steps
The holder of IP rights may initiate private investigations before filing a claim with the relevant authorities, and thus use such investigation in support of a claim. Ex officio investigations are also applicable from public authorities such as the Market Inspectorate (although not yet effective in practice).
Consumer surveys can be carried out either by the parties outside the proceedings or independently by a court appointed expert.
Survey evidence is used by a claimant in a trademark case litigation to prove that there is a likelihood of confusion between its trademark and the sign that the defendant is using. Such surveys are produced ex-parte and will be subject to the court proceeding and debate by the parties with consideration to fact that are unilaterally produced (i.e. ex parte surveys) and they may be based on misleading questions or manipulated information.
Additionally, given that the level of a well-knowingness of trademarks is theoretically objective a benchmark percentage based on survey evidence seems to be an easy solution, thus it is becoming very used in practice.
However, there are no established criteria in relation to the acceptance of such evidence. In this regard, there are some noteworthy issues to be considered due to the potential inaccuracies and bias of survey evidence. This also having in mind, that usually the information is collected for the purpose of impending afore seeable litigation.
Use of Expert Witnesses
Besides evidence based on documents and the hearing of witnesses, when the case involves issues for which expert advice is required, the court may resort to a court appointed expert.
The court appointed expert is considered to be an auxiliary of the court, whose main purpose is to offer the Court the technical knowledge that he might not have. Please note that the court is not bound with the results of the technical expert, in fact it could ignore them, subject to a justifiable decision.
Recent changes of the Law on Industrial Property, introduced the figure of the so called “IP experts” and the criteria to become an IP expert. Although the law is not very clear in this regard, theoretically the IP experts (who apparently are not the Authorised Trademark Agents) are supposed to prepare examination reports on specific cases as requested by either the court or the prosecutor (as the case may be) and appear before the court in hearing sessions to give their examination results on eventual infringement. To the best of our knowledge, so far, the case law in this regard is very weak.
In a civil law dispute, the defendant would have to demonstrate that its trademark does not fall under the so-called relative grounds for refusal. In practice, this implies the demonstration of the fact that there is no likelihood of confusion.
It is also a common practice that the defendant may also file counterclaims seeking revocation or invalidation of a trademark (as explained in the causes of action section above).
The final decision of the District Court can be appealed by the parties to the Appeal Court, within 15 days.
The non-final and intermediate decisions of the District Court can be appealed with the Appeal Court, within a term of five days. The Appeal Court’s decisions can be appealed to the Supreme Court within 30 days.
In practice, the legal examination process tends to be long. Recently there has been changes to the Albanian Civil Procedure Code that impose deadlines for the examination of court cases. It is expected that with the introduction of such changes the court examination process would be shorter than during the previous years and effective.
Anyhow, it is worth noting that the judicial system in Albania regarding IP cases remains challenging.
Legislative Framework and Causes of Action:
Trademark Law, Rules and Regulations
Law on Industrial Property in Albania, as the main applicable law, has been subject to various amendments. The most recent ones took place in 2017, with the aim of further alignment with EU law. These include Directive 98/44 /KE of the European Parliament and the European Council, dated 06 July 1998 on the legal protection of biotechnological inventions. Others are Regulation (EU) No. 1151/20 dated 21 November 2012 on quality schemes for agricultural products and foodstuffs and Regulation (EU) No. 1308/2013 dated 17 December 2013 on establishing a common organisation of the markets in agricultural products, repealing Council Regulations (EEC) No 922/72, (EEC) No. 234/79, (EC) No. 1037/2001 and (EC) No 1234/2007, as amended.
Armando Bode is an Associate at Boga & Associates, which he joined in 2015. He is an authorised Trademark Attorney and has provided his assistance in competition and IP law assignments for some of the most well-known brands operating in telecommunication, fashion and food industries. Armando graduated in Law in 2014 and obtained a Master of Science in Public Law from the University of Tirana, in 2016. He speaks fluent English and Italian.
Renata Leka is a Partner at Boga & Associates, which she joined in 1998. She is an authorised trademark agent and has ample experience in trademark filing strategy, portfolio management and trademark prosecution, and handles a range of international matters involving IPR issues. She manages anti-piracy and anti-counterfeit programmes regarding violation of copyright in Albania and assists international clients in all aspects of the IPR. Renata graduated in Law at the University of Tirana in 1996 and holds a Practice Diploma in International Intellectual Property Law (2006) and a Practice Diploma in Anti-Trust Law (2009) from the College of Law of England and Wales, UK. Renata is fluent in English and Italian.