Further to our earlier article in which we announced that the Kosovo Assembly has recently approved three new laws in the field of industrial property, we now write to provide further details of these laws.

The Law on Trade Marks No. 04/L-026 
This new law was approved by the Kosovo Parliament on 29 July 2011 and promulgated by the President's Decree DL-017-2011 on 9 August 2011. It was published on 29 August 2011 in the Official Gazette and entered into force on 13 September 2011, although the Implementing Regulations have not yet been drafted.

The new trade mark law does not introduce any significant changes to the current system in Kosovo, but was mainly intended to correct certain discrepancies in the previous law. However, points of particular relevance in the new law compared with the provisions of the previous law are outlined below:

- The new law specifically provides that all signs distinguishing goods or services of one undertaking from those on other can be the object of trade mark protection. The law specifically mentions some non-traditional trade marks, such are colours, shapes of goods and wrappings. 
- Oppositions can be filed against trade marks, based on the grounds of: an earlier registered or filed trade mark (identical or similar, and covering identical or similar goods/services); a non-registered well-known trade mark (in compliance with Article 6bis of the Paris Convention); or a trade mark with a reputation and which is registered for dissimilar goods/services.
- Trade marks must be renewed within a period of 6 months preceding the date of renewal. It is also possible to pay renewal fees within a 6 month grace period after the expiry date, along with a late fine amounting to 100% of the renewal fee.
- A revocation action based on non-use can be filed against any trade mark which has not been used for a continuous period of 5 years or more.
- An invalidity action may be based on various grounds, including absolute grounds for refusal, earlier registered rights (as for filing an opposition), and if the application for the registration was filed in bad faith.
- The law also recognizes collective and certification trade marks. 

The Law on Patents No. 04/L-029 
This law was approved by the Kosovo Parliament on 29 July 2011 and promulgated by the President's Decree DL-016-2011 on 9 August 2011. 

Provisions of particular significance in the new law are highlighted below:

- The new law provides that the inventions which are novel, involve an inventive step and are industrially applicable can be protected by a patent. The law further defines what cannot be considered as a patentable invention, and these provisions fully correspond with the wording of the EPC.
- The Patent Office of Kosovo will perform a formal examination of patent applications, and if the formal conditions set by law are fulfilled and the application at first sight satisfies the conditions of novelty, industrial applicability, inventiveness and unity, the Office will grant a patent and such a notice of this granted right will be published in the Official Gazette. 
- The law provides that a patentee must submit, before the expiration of the 9th year of protection of a patent, proof that a patent for the same invention has been granted by the EPO or another institution authorized to examine patent applications. If such proof is timely submitted, the Patent Office of Kosovo will grant a patent with the same scope of protection as the corresponding granted patent, for a period of 20 years from the filing date. Conversely if proof of grant of a corresponding patent is not timely submitted, the patent will expire after the expiration of the 10th year of validity from the filing date. 
- Annual fees are payable in respect of the 3rd and each subsequent year of protection, and fall due on the 2nd and each subsequent anniversary of the filing date. 
- Reinstatement of patent rights or continuation of the proceedings may be requested under certain circumstances, but not when the following deadlines are missed: filing a claim for reinstatement or continuation; filing of the patent application; payment of annual fees; extension of term; or in proceedings with two or more parties involved. 
- Invalidity of a patent can be claimed at any time during the duration of a patent, on the following grounds: the patent lacks clarity; the invention is not patentable; the invention is not novel, industrially applicable or inventive; or there is no unity of the invention. 
- Supplementary Protection Certificates are provided for under the new law, but these provisions are not yet in force.
- Decisions of the Patent Office of Kosovo can be appealed within 15 days from the receipt of the decision, before the Appeal Commission. 

The Law on Industrial Designs No. 04/L-028
This law was approved by the Kosovo Parliament on 29 July 2011 and promulgated by the President's Decree DL-013-2011 on 9 August 2011.

Significant provisions in the new law are as follows:

- According to new law, registration may be achieved in respect of industrial designs which are new and have an individual character. The law allows the filing of multiple design applications, provided that the designs all belong to the same class of the International Classification. 
- An application for protection of industrial design must contain: a request for registration of the industrial design; identification of the applicant; representation(s) of the design that are suitable for reproduction; information regarding the designer or his declaration stating that he does not wish to be mentioned in the application; identification of the product that is the subject of the design; a description of the design; (if relevant) a request for deferment of publication of the registration; and a Power of Attorney if the application is being filed by a legal representative.
- Formal examination of design applications is carried out by the Patent Office and, if the formal requirements are satisfied, an Industrial Design will be registered and the granted right will be published, provided that no claim for postponement of the publication is filed.
- The scope of protection conferred by an industrial design includes any design which does not produce a different overall impression on the informed user.
- Industrial designs are valid for an initial term of 5 years from the filing date, which term may be extended for up to four periods of 5 years each, i.e. for a maximum term of 25 years. 
- An industrial design may be cancelled on certain grounds, including that the design is not novel and does not have the individual character; the subject matter of registered design cannot be protected by an industrial design right; or the applicant or holder of the registered design is not its holder.
- Decisions of the Patent Office of Kosovo may be appealed within 15 days from the receipt of the decision, before the Appeal Commission. 

Please do not hesitate to contact us should you require any information or assistance in respect of the above matters.