Courts become more involved in examining IP disputes

A recent case before the Tirana District Court and the Court of Appeal has shown that Albanian judges are beginning to develop a genuine interest in IP matters. Until recently, judges simply used to adopt the recommendations of the Albanian Trademark Office without examining the disputes before them in detail. The recent decision in Arseni Shpk v Bavaria NV appears to signal a new era for IP litigation in Albania.

Albanian company Arseni Shpk, holder of Albanian trademark B-52, filed suit against Dutch company Bavaria NV, holder of trademark B-52, which was registered originally in Benelux and later internationally, including in Albania. Arseni requested the removal of Bavaria's B-52 mark from the Albanian Trademark Register.

Bavaria  filed a counterclaim against Arseni, requesting the recognition of B-52 as a well-known trademark held by Bavaria and the removal of Arseni's B-52 mark from the Albanian Trademark Register.

The court assessed the criteria for qualification of the B-52 trademark as a well-known trademark in Albania. The mark was registered in Albania by Arseni on 18th April 2008, and by Bavaria in Benelux on 19th February 2008 and in Albania on 12th February 2009. In determining whether the trademark was well known in Albania before its local registration by Arseni, the court used the criteria stipulated in the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organisation.

Although Bavaria marketed its B-52 beverage in Albania between 2006 and 2010, through Arseni and two other companies with the same owner, and even though it fulfilled the condition that the mark was known to the persons involved in the distribution channels for such products, the court found that in order to be well known, the mark should be recognised in a larger circle of consumers, which was not proven during the proceedings.

The court went on to examine:

• General public awareness.
• The duration of use of the mark and the territory in which it was used.
• Advertising carried out by Bavaria using the mark.

The court found no evidence of the latter.

Given that Bavaria provided no evidence that it had fulfilled any of the criteria of the joint recommendation, which the court examined one by one, the court found in favour of the first registration of the B-52 mark in Albania by Arseni.

The Tirana District Court's decision was confirmed by the Court of Appeal on 5th September 2013. Bavaria has appealed to the Supreme Court.