Albania is currently contemplating the revision of its existing legislation on industrial property currently regulated by one single law i.e., Law no. 9947, dated 7.7.2008 “On Industrial Property”, as amended. The existing law governs all domains of industrial property and business secrets, including patents of invention, utility models, trademarks, industrial designs, and geographical indications.
In December 2023, the Ministry of Economy and Finance officially released two separate draft laws for public consultation i.e., one on “Trademarks” and another one on “Patents of Inventions and Utility Models”. This initiative aims to abrogate the current legislation governing trademarks, patents of invention, and utility models specifically, as part of an effort to enhance and modernize the regulatory framework in these domains and fully align those with EU legislation. The primary objective of the drafts is to address observed legal gaps encountered during administrative procedures within the General Directorate of Industrial Property (GDIP) and civil trials in this domain, in accordance with best international practices.
Draft Law on Trademarks
The draft law concerning trademarks seeks to improve and regulate various aspects of trademark protection, including absolute and relative grounds for refusal of unregistrable signs, and addressing signs that infringe the rights of proprietors of previously registered trademarks, with the purpose of offering greater protection to the legitimate proprietors. In this context, the proposed legislation expressly forbids authorized agents or representatives of a company to register a trademark in their name that rightfully belongs to another party. This prohibition addresses a prevalent practice in Albania, where agents or representatives have wrongfully engaged in similar registrations so far.
In addition, the draft law pays specific attention to the procedures concerning the registration, utilization, transfer, and licensing of trademarks. It additionally clarifies the classification of the list of goods/services and provides guidance on their proper specification within the application form or in response to subsequent inquiries. Furthermore, it aims to clarify better the institution of the priority right, encompassing priority rights arising from the initial display of goods or services in an international exhibition, followed by precedence established through prior registrations in other nations, in accordance with the relevant international conventions in which Albania maintains membership.
Finally, it regulates the procedures for the registration and protection of international trademarks registered with the World Intellectual Property Office (WIPO) and having effect in Albania.
Draft Law on Patents and Utility Models
The new draft law on patents focuses on defining the elements of invention, novelty, inventive step, and industrial applicability (including agriculture). It also introduces provisions for maintaining specialized registers for patents, utility models, and supplementary protection certificates – areas either unregulated or insufficiently addressed in the existing law.
Furthermore, the draft law improves the processes related to file inspections at the GDIP, reinstating the rights of patent proprietors, and seeks to ensure the presentation of comprehensive coverage in the official Bulletin of GDIP of applications, assignment, rectifications, ongoing processes, annulments, and invalidations of patents. It also addresses voluntary and compulsory licensing matters.
The application, registration, and effects of European patents, their conversion into national patents, and international applications under the Patent Cooperation Treaty are addressed, aligning national practices with international standards.
Although GDIP does not engage in substantive examination of invention patents, the draft law effectively regulates and enhances the procedures for conducting such examinations. The examination procedures align closely with established practices of countries that undertake substantive examinations, including those with which Albania has signed pertinent agreements, such as the European Patent Office. This aspect represents a novelty introduced by the draft law as compared to Law No. 9947.
To ensure alignment with international principles, Albanian authorities have sought input from both WIPO and EUIPO, reflecting their recommendations in the draft laws, in order to harmonize the proposed legislation fully with relevant EU acquis.
While the public consultation closed in December 2023, it is anticipated that the draft laws will be approved in 2024 by the Parliament.
The information in this document does not constitute legal advice on any particular matter and is provided for general informational purposes only.
By Alban Caush and Anisa Rrumbullaku, Partners, and Ermal Mema Associate, Karanovic & Partners
