Causes of action
Trademark litigation can be of an administrative, civil or criminal nature. Specifically, it can take the form of:
• an appeal filed against an administrative decision of the Industrial Property Directory (IPD);
• a civil dispute, where the litigation can be initiated directly before the court; or
• criminal litigation arising due to a criminal complaint.
During the period in which trademark applications are published in the IPD Bulletin, interested parties may challenge the registration of a trademark on the basis of the relative grounds for refusal (ie, earlier rights) before the Chamber of Oppositions. The Chamber of Oppositions decision may then be challenged before the Board of Appeal within one month from its date of notice. The Board of Appeal decision may be challenged before the competent court within 45 days. Violation of IP rights may be challenged before the civil courts, unless the violation is considered a criminal contravention under the Criminal Code.
Infringement action
A trademark owner is entitled to bring an infringement action against any third party that is infringing its exclusive rights. In practice, trademark owners are advised to send a warning letter before commencing an infringement action. Exclusive licensees are also entitled to bring infringement actions, whereas non-exclusive licensees and distributors may be entitled to do so, depending on the contractual arrangements in place with the trademark owner. Actions can be brought against both those which have carried out infringing activities and those which have participated in the distribution of infringing goods.
Invalidity and revocation proceedings
Interested parties may seek the invalidation or revocation of trademarks. Invalidation may be claimed based on absolute grounds of refusal (eg, if the mark is non-distinctive or descriptive), relative grounds for refusal (ie, violation of earlier rights) or on the basis of the application being made in bad faith. Revocation can be claimed against a trademark that:
• has not been used for five years following registration;
• has become the common name for a product or service for which it is registered, due to the actions (and lack of preventative actions) of the owner; or
• has become misleading as to the nature, quality or geographical origin of the goods and services for which it is registered, due to the use made of it by the owner.
Until the amendments introduced in 2017, invalidation and revocation of trademarks could be claimed only before the court. Presently however, the Law on Industrial Property provides that both the invalidation and revocation can be claimed before the Invalidation/Revocation Chamber of the IPD, unless there is an ongoing proceeding before the court for the same matter. So far, these amendments have not been tested in practice; therefore, it is yet to be seen how the new chamber will exercise its powers.
Alternative dispute resolution
The situation regarding arbitration in Albania remains unclear, since the latest changes to the Civil Procedure Code repealed the chapter on arbitration and no arbitration law has been enacted so far. However, the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards and European Convention on International Commercial Arbitration are applicable in Albania.
Mediation is also applicable in resolving all civil, commercial and family law disputes, as well as cases in which it is requested and accepted by the parties, before or after the dispute has arisen.
According to the Mediation Law (10385/2011), as amended, settlement agreements reached through mediation are binding for the parties and enforceable in the same manner as arbitration awards.
The law does not provide for any penalties against parties that refuse to mediate. The parties can freely decide to solve a dispute through mediation.
Arbitration can also be sought where rights in trademarks are infringed by registration or use of a domain name, pursuant to the Decision of the Board of Directors of Albanian Electronic and Mail Communications (437/2008), which regulates registration and administration of the domain name ‘.al’ and the sub-domains thereunder.
Litigation venue and formats
The court system and litigation venues explained
The civil court system is organized into district courts, courts of appeal and the Supreme Court. Appeals can be made on two levels: before the courts of appeal and before the Supreme Court.
The district courts are organized into specialized sections for the allocation of particular cases according to the subject of the claim, including sections for civil disputes, family law disputes and commercial disputes.
The administrative courts are organized into the administrative first-instance courts, the Administrative Court of Appeal and the Administrative College of the Supreme Court. However, administrative courts will only handle lawsuits filed against the IPD.
Trademark litigation between private parties is generally handled by the commercial disputes section of the Tirana District Court, but the issue of competent courts remains debatable. Albania lacks specialised IP courts and the present system provides the different courts with jurisdiction over IP disputes with unclear and sometimes overlapping criteria 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 matters. In many disputes brought before the courts, this confusion has lengthened the court’s proceedings extensively, adversely affecting the positions of the parties.
Forum shopping
Forum shopping usually turns out to be problematic in practice, taking into consideration the pitfalls explained above regarding the uncertainty of the current legal framework.
Jury versus bench
Jury trials are not applicable in Albania. All trials are bench trials and the court is composed of a single judge or a panel of judges (depending on the dispute).
Damages and remedies
Injunctions
The court may issue a preliminary injunction to:
• impede imminent infringements or infringements that have started;
• prohibit the entry of the goods into civil circulation;
• order the preservation of relevant evidence regarding the alleged infringement, subject to the protection of confidential information;
• seize, remove from circulation or take control of the items that constitute infringement or the means used for the production of the items that constitute infringement, for the period of the proceedings; or
• 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, order 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 economic harm (eg, loss of profit) or non-economic harm (eg, loss of reputation or garnishment of the commercial image of the company), the court may award the plaintiff damages comprising the damage suffered plus the loss of profit. If claimed, moral damages will be liquidated if deemed necessary by the court.
When deciding the level of compensation, the court takes into consideration:
• any effective and actual damage, including the lost profits incurred by the trademark owner;
• any unfair profits realised by the infringer resulting from unfair competition; and
• any moral damage incurred by the trademark owner due to infringement or damage to its goodwill or reputation.
Depending on the case, the court can also decide for the immediate compensation of damages based on the profits that would be collected or gained if the infringer had asked for authorisation to use the concerned trademark.
Pursuant to the 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. It is punishable with a fine or up to one year’s imprisonment.
The costs of civil proceedings are attached to the losing party.
Other remedies
With the final decision, the court can order:
• seizure of the goods or services that infringe the IP rights;
• removal or seizure of the materials, equipment, instruments and measures used mainly for the creation and production of the infringing goods or services; and
• publication of the final decision of the court in the public media at the expense of the infringer.
Regarding counterfeits, the removal of the attached trademark per se is not sufficient, except in specific cases to allow the trading of these goods.
Evidencing the case
Investigations and first steps
The trademark owner may initiate private investigations before filing a claim with the relevant authorities, and use the investigation in support of the claim. Ex officio investigations directed by public authorities such as the Market Inspectorate are also applicable, although they have not yet been operative in practice.
Survey evidence
Consumer surveys can be carried out either by the parties outside the proceedings or independently by a court-appointed expert.
Survey evidence can be used by a claimant in trademark litigation to prove a likelihood of confusion between its trademark and the defendant’s. Such surveys are produced ex parte and are subject to the court proceeding and debate by the parties, with consideration of the fact that they are often unilaterally produced (ie, in the case of ex parte surveys) and hence may be based on misleading questions or manipulated information.
Given that the level of renown of a trademark is theoretically objective, a benchmark percentage based on survey evidence seems to provide an easy indication of such renown. Hence, surveys are becoming very popular in practice. However, there are no established criteria for the acceptance of such evidence. In this regard, there are issues to be considered that are caused by the potential inaccuracies and biases of survey evidence. It should also be borne in mind that the information is usually collected in preparation for a foreseeable litigation.
Use of expert witnesses
Besides evidence based on documents and the testimony of witnesses, when the case involves issues for which expert advice is required, it may resort to a court-appointed expert.A court-appointed expert is considered to be an auxiliary of the court, whose main purpose is to offer the court the technical knowledge that it might not have. The court is not bound by the opinion of a technical expert, and in fact it can ignore it, if it has a justifiable reason to do so.
Recent changes to the Law on Industrial Property introduced the concept of the ‘IP expert’ and the criteria to become one. Although the law is not clear in this regard, theoretically IP experts (who apparently are not authorised trademark agents) are supposed to prepare examination reports on specific cases as requested by either the court or the prosecutor and appear before the court in hearing sessions to give their results on eventual infringement. So far, the case law in this regard has been very weak.
Available defences In a civil law dispute, the defendant must demonstrate that its trademark does not fall under the so-called relative grounds for refusal. In practice, this means demonstrating that there is no likelihood of confusion between the trademarks in question. It is also common practice for the defendant to file counterclaims seeking revocation or invalidation of a trademark (as explained above).
Appeals process
The final decision of a district court can be appealed by the parties to an appeal court, within 15 days of the judgment. Non-final and intermediate decisions of a district court can be appealed to an appeal court, within five days of each decision. Appeal court decisions can be appealed to the Supreme Court within 30 days of the judgment.In practice, the legal examination process tends to be long. Recent changes to the Civil Procedure Code have imposed deadlines on the examination of court cases. It is expected that with the introduction of such changes, the court examination process will become shorter and more effective than in previous years.Regardless, the judicial system in Albania remains challenging for trademark cases.
‘This article first appeared in Trademark Litigation: A Global Guide 2018, a supplement to World Trademark Review, published by Globe Business Media Group – IP Division’. To view the guide in full, please go to http://www.worldtrademarkreview.com’.
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