Protecting international marks in a non-designated country

Albania signed up to the Madrid Agreement and Protocol on 14th October 1995 and 30th July 2003, respectively. In addition to giving the same protection to international trademarks which have Albania as a designated country as to marks filed locally in Albania, the courts have admitted that even international marks without Albania as a designated country are not necessarily excluded from legal protection.

Such was the case in a dispute between Fabbrica Italiana Accumulatori Motocarri Montechio and MBA Shpk over the ownership of the trademarks FIAMM and FIAM, where the court gave priority to the international registration of the FIAMM mark over a national registration by MBA Shpk.

MBA Shpk had registered the marks FIAM and FIAMM with the Albanian Patents and Trademarks Office (ALPTO) on 28th October 2005 and 15th March 2006, respectively. Fabbrica Italiana had filed an international registration for the trademark FIAMM with the World Intellectual Property Organisation (WIPO) on 13th October 1965, without including Albania as a designated country for protection. However, Fabbrica Italiana had been trading its products in Albania since 1999, as evidenced by customs documents, value added tax invoices and agreements that Fabbrica Italiana had signed with Albanian companies and public authorities.

MBA Shpk claimed that the FIAMM mark did not enjoy protection since Albania was not a designated country in the WIPO international trademark registration. The court observed that Fabbrica Italiana had registered its trademark with WIPO since 1965 and kept renewing its registration. The fact that Albania was not a designated country in Fabbrica Italiana's registration as such should not exclude it from legal protection.

Moreover, taking into account that Fabbrica Italiana had traded its products under the FIAMM mark in Albania for more than 10 years (since 1999), as well as the mark's use, representation, publication and advertising, the court concluded that the trademark fulfilled the conditions of a well-known mark under Article 6bis of the Paris Convention. The fact that Fabbrica Italiana had not requested cancellation of the conflicting trademark registered by MBA Shpk with ALPTO within the five-year period as per Article 6bis did not affect the court's reasoning, as the international trademark had the status of a well-known mark, even if it was not registered in Albania by Fabbrica Italiana.

In relation to the FIAM mark – taking into account not only that the word was almost identical to the FIAMM mark, except for the extra letter 'M', but also that the products and services covered by the trademarks were the identical – the court concluded that there was a possibility of confusion among the general public.

Therefore, the court ruled that the two locally registered trademarks, FIAM and FIAMM, should be cancelled and that MBA Shpk should refrain from using them any further.

The defendant appealed to the Court of Appeal, which upheld the first-instance decision.

The court's ruling gives reassurance to holders of well-known international trademarks, as designating Albania in the international registration is not a precondition for legal protection in Albania.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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