Non-use cancellation actions: ambiguities regarding burden of proof

Like other jurisdictions, Albania requires that a trademark be used in order to protect its validity. If the mark owner does not use its trademark for the goods or services for which it was registered for an uninterrupted period of five years, the trademark is subject to cancellation, unless reasonable causes have prevented use of the trademark, independent of the owner’s will. Any interested third party may file a non-use cancellation action with the courts, provided that the registered mark owner:

• is summoned to appear in court to defend its case; and
• has not commenced use of the trademark, even after the lapse of the five-year period but no later than three months before the filing of the cancellation action.

Recent case law reflects the complexity of such non-use cancellation actions, particularly with regard to the burden of proof. Two legal issues are essential in determining the success of non-use cancellation actions in two opposing interpretations of Albanian courts:

• Which party has the burden of proof?
• What is the standard of proof required for such actions?

Since it is quite difficult to prove non-use, in most countries the burden of proof lies with the mark owner. In Albania Tabak Fabrika e Re e Cigareve v Eastern Company SAE the plaintiff requested cancellation for non-use in Albania of three international trademarks, CLEOPATRA LIGHTS, PAPATHEOLOGOU SA CLEOPATRA and CLEOPATRA MOLASSES, covering tobacco and cigar goods. Albanian procedural law provides that the claimant of a right has the burden to prove the facts on which its claim is grounded. In this particular case, the court ruled that the mark owner should provide evidence that it had used the trademarks within a period of five years in Albania.

In Ashland Nederland BV v Kappa Oil ShA the plaintiff requested that the defendant stop using three marks – MAX LIFE, MAX LUBE and MAX POWER – which infringed the plaintiff’s international trademark MAX LIFE covering industrial oils and greases and lubricants; while the defendant counterclaimed for cancellation of the international trademark MAX LIFE for non-use in Albania for an uninterrupted five-year period. The court ruled that the party alleging the non-use had to provide evidence that the mark owner had not used the trademark in Albania.

Under Albanian law, use of a mark may be evidenced as follows:

• use in packaging, catalogues, leaflets, manuals, advertising, in communication and electronic/audiovisual media, provided that it is perceived by the public as an offer for sale or supply of the products or services identified by the trademark in Albania;
• use by a licensee authorised by the mark owner;
• use  in a form that alters only those elements of the mark that do not prejudice its distinctive character; and
• placement of the mark on the products or their packaging in Albania only for export purposes.

In Albania Tabak Fabrika e Re e Cigareve v Eastern Company SAE, where the burden of proof of use rested on the mark owner, the latter claimed that it could not provide evidence by way of the products' customs certificates since declaring a trademark in the customs statement was optional. Therefore, the court ordered the cancellation of the trademarks PAPATHEOLOGOU SA CLEOPATRA and CLEOPATRA MOLASSES in Albania. However, the court accepted as sufficient evidence of the use of the CLEOPATRA LIGHTS mark correspondence between the mark owner and a local distributor, notwithstanding the distributor’s denial of any contractual relations with the mark owner.

In Ashland Nederland BV v Kappa Oil ShA, where the counterclaimant was asked to provide evidence of non-use of the trademark MAX LIFE in Albania, the counterclaimant provided certificates issued by the Commercial Register supporting that the plaintiff had not established a branch or subsidiary in Albania and by the Albanian Patents and Trademarks Office evidencing that the plaintiff had not filed a licence agreement authorising use of the mark in Albania. The court rejected such evidence as insufficient to prove that the mark owner did not use the trademark in Albania, since the latter was not required to establish a branch or subsidiary in Albania in order to be able to trade its products in the country and the law does not indicate the means by which mark owners can market their products in Albania. In an affirmative assertion, themark owner provided customs statements on the import of its products bearing the trademark MAX LIFE into Albania.

In light of the ambiguity created by recent case law in relation to the burden of proof in non-use cancellation actions, mark owners and new trademark applicants should be vigilant to use their trademarks in countries where they seek protection.