Protecting well-known marks

Albanian law grants protection to unregistered marks if they are well known to the general public as a result of extensive market use, publication/promotion or advertising (Article 156(4) of the Law on Industrial Property (9947/2008).

Albanian law and jurisprudence specify no particular thresholds or other requirements as to how much use is needed for an unregistered mark to qualify for protection as a well-known mark. Instead, the Agreement on Trade-Related IP Rights and the Paris Convention provide guidance in that respect. As a result, a recent court decision on the matter is worth noting.

Sino Albanian Industry (the plaintiff) filed with the Albanian Patent and Trademark Office (ALPTO) applications to register the trademarks ARBERIA (word and device), DS (word and device), PORTI (word and device) and GENT (word and device), all in Class 34 (tobacco products) of the Nice Classification. The applications were duly published by ALPTO in the Official Bulletin.

The marks had been present on the Albanian tobacco market for almost 30 years, during the period of the centralised economy (before 1990), when cigarettes were produced under these trademarks by state-owned companies.

Albania Tabak-Fabrika e Re e Cigareve (the defendant), a state-owned company, subsequently applied to register the same marks in the same class. The respective applications were also published in the Official Bulletin, even before publication of the marks.

The plaintiff filed an opposition with ALPTO against registration of the defendant's marks on the grounds that it had filed an earlier application for registration. ALPTO rejected the opposition and decided not to register the plaintiff's marks on the following grounds:

• The plaintiff was not entitled to file the opposition since it enjoyed no prior rights in the marks.
• Pursuant to Article 152/1 of the Law on Industrial Property, an opposition against registration of a mark may be filed by the owner of a prior registered mark or the owner of a well-known mark.
• Pursuant to Article 143/5/ç of the Law on Industrial Property, a mark which is well known in Albania enjoys priority rights over any relevant application for registration.

ALPTO concluded that registration of the marks in the plaintiff's name would cause confusion, and that consumers could be deceived as to the quality and origin of the products, believing that such products were the same as those produced by the state-owned companies during the period of the centralised economy. This would give the plaintiff an unfair advantage over other cigarette producers.

The plaintiff appealed the decision to the Tirana District Court, requesting cancellation of the decision and registration of the marks in its name.

The Tirana District Court accepted the appeal and ordered ALPTO to register the marks in the plaintiff’s name on the following grounds:

• The plaintiff was entitled to file the opposition since it enjoyed prior rights through the earlier filing of its application for registration.
• The marks could not be considered to be well-known marks under Albanian law and Article 6bis of the Paris Convention, which stipulates that:

“[A w]ell-known mark is the mark considered as such by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.”

The court acknowledged the fact that the marks were used for cigarettes manufactured by the Albanian state-owned companies at the time of the centralised economy in Albania (before 1990). However, taking into consideration that the state-owned companies producing cigarettes under the marks had not existed for more than 20 years, and that most cigarette consumers had never consumed such cigarettes due to their age, they could not be confused with regard to the origin of the products. 

Therefore, the marks could not be considered to be well-known marks and the plaintiff enjoyed priority rights as it had filed its applications for registration before the defendant.

The defendant appealed the decision of the Tirana District Court to the Court of Appeal, but that appeal was rejected.