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Making progress

Making progress

Foreign brand owners are increasingly looking to enforce their trade marks in Albania. Gjerji Gjika of Drakopoulos Law Firm looks at recent developments in IP protection in the country

From the mid 1940s to early 1990s, the Albanian economy was based entirely on domestic resources and there were no foreign international companies in the country, with the exception of products (mainly non-food products) from the former communist bloc.

Following the regime change in the early 1990s, Albania became more open to international products and services due to the availability of media, information and the import of products. The country also saw a considerable share of its population immigrate to southern European countries.

As in many other cases of countries suffering a large emigration of people, a number of them returned to invest and live in Albania bringing concepts and businesses from the countries where they worked.

The background

Starting in the mid to late 1990s, it was observed that in many cases businesses operating in Albania had a tendency to use similar or the same marks or devices, or trade dress that were actually registered trade marks of well-known international companies.

What made it more serious was that people started to identify a given range of products, no matter who the producer was, by the name or the trade mark of international companies; such cases include an international oil company's logo, which was perceived to be a mark for gas stations in general, rather than that company's products.

In recent years though, international companies have shown particular interest in the potential infringement of their trade marks in particular and IP in general, also including the reservations of domain names such as .al and .com.al.

In many cases, the extent of the infringement includes not only the unauthorised use of registered trade marks, logos, devices and trade dresses by third parties, but also the suppliers of such equipment.

The legislation

Although the first provisions on trade mark infringement were introduced with the Civil Code in 1994, in particular provisions on unfair competition, the current Albanian legal environment is now well-equipped with remedies for handling these IP rights infringements.

Currently, Article 156, Point 2 of Law 9947/2008 On Industrial Property stipulates that the infringement of IP rights constitutes the use by any third party, without the authorisation of the owner, of:

• a sign that is the same for goods or services that are the same as those for which the mark is registered;
• a sign that is the same as or similar to a mark, or because of the identicalness or similarity of the goods and services for which the sign is used with those designated by the registered mark may cause confusion to the public; or
• the same or similar sign for goods or services, even when they are neither the same nor similar to those for which the mark has been registered, when the mark is well known in the Republic of Albania and from the use of the sign, an unfair benefit is generated or the distinguishing nature and the good name of the mark are damaged.

With regard to the abovementioned signs, Article 156, Point 3 of Law 9947/2008, stipulates that the following actions are considered infringements to IP rights:

• putting the signs on goods or on their packaging;
• putting the goods onto the market, offering them for sale, using this sign, or creating stocks for these purposes;
• the offering of services using this sign;
• the import or export of goods using this sign; and
• the use of the sign in business and in advertisements.

In addition to bringing an action for infringement, trade mark owners can also bring an action for trade mark dilution. Under Article 156, Point 4 of Law 9947/2008, a dilution claim can be brought only if the mark is well known in the Republic of Albania to the public in the respective sector as a result of use, representation, publication or advertisement.

Under Article 157 of Law 9947/2008, the use by a third party of:

• the name and address of the owner of the trade mark;
• the indication of the type, quality, amount, destination, value, place of origin, time of production or other characteristics of goods or the performance of services; or
• the mark, when it is necessary to show the purpose of use of goods and services, especially in the case of accessories or parts, are not considered to be IP rights infringements.

By virtue of Article 158, of Law 9947/2008, the trade of goods in the Republic of Albania, when the distributor is duly authorised for such trade by the owner of the trade mark in the Republic of Albania, is not considered to be trade mark infringement.

Case law

In the case Lowenbrau AG v NORGA Shpk (2009), the Court found that the labelling of Lowenbrau beer by Norga Shpk was different from the labelling of Lowenbrau beer in both colour scheme and design. However, it concluded that the name of the beer produced by the defendant infringed the plaintiff's trade mark as the name of the beer produced by the defendant was identical to Lowenbrau.

In the case Ekstra Shpk v Rilindja Shpk (producers of Bantia cognac and Fernet Ekstra brandy respectively) (2008), the Court concluded that despite the different shade of colour used on brandy trade mark labels for Bantia cognac and Fernet Ekstra brandy, the use by the defendant of words identical to those of the plaintiff's trade mark constituted an infringement of the latter's trade mark, and caused confusion for consumers.

In the case Hard Rock Café Limited v Lusan Muhametaj (owner of the bar Tirana Rock Café) (2008), the Court concluded that there was an infringement of the Hard Rock Café trade marks by the trade mark Tirana Rock Café due to, inter alia, the decoration colours used on the latter's label that greatly resembled those of the original trade mark.

In the case Karelia Tobacco Company Inc v Ballgjini Shpk (2006), the Court held that there was an infringement of the Karelia Slims trade mark, due to the similarity between the white colour shade of the packages and the colouring strip.

The Albanian Criminal Code does not expressly consider trade mark infringement to be a criminal offence. The Criminal Code recognises as criminal offences:

• the falsification of stamps, seals and documents (Article 190); and
• the illegal manufacturing of products and goods (Article 288/a).

Trends

Considering that the Criminal Code does not expressly stipulate that a trade mark infringement constitutes a criminal offence, there is a new trend for amending the Criminal Code and the Criminal Procedure Code in order to provide for cases when a trade mark infringement may also constitute a criminal offence as well as the relevant procedure involved. This is also in accordance with the National Strategy for IP Rights for 2010 to 2015 in Albania.

Another trend reflected in the National Strategy includes the establishment of a central inspectorate, which, as well as other duties that will be vested by law, will have also be responsible for investigating and inspecting cases of potential IP infringements.

As one of our firm's partners is a member of the ALPTO Consultancy Group for the National Strategy for IP Rights, we are keeping a close eye on IP developments.