DECISION
No 1706 of 29 December 2008
ON THE APPROVAL OF REGULATION FOR REGISTRATION OF TRADEMARKS AND SERVICE MARKS
Pursuant to Article 100 of the Constitution and Articles145-155,161-164, 166,175 and 202 of Law No 9947 of 7 July 2008, "On Industrial Property," upon the proposal of the Minister of Economy, Trade and Energy, the Council of Ministers
DECIDED:
1. To approve the regulation “On the Registration of Trademarks and Service Marks,” as per the text attached with this decision.
2. To designate the Directorate General of Patents and Trademark for the implementation of this decision.
3. Order No 3 of 4 December 1994 of the Committee of Science and Technology, “Rules for marks,” is repealed.
This decision shall enter into force following its publication in the Official Journal.
PRIME MINISTER Sali Berisha
REGULATION ON REGISTRATION OF TRADEMARKS AND SERVICE MARKS
CHAPTER I GENERAL PROVISIONS
1. Purpose
1.1 The purpose of this regulation is the definition of procedures with respect to:
a) the filing of applications for the registration of trademarks and service marks with the Directorate General of Patents and Trademarks (DGPT) and their examination by DGPT;
b) filing of applications for the renewal and other changes to the register of marks and their examination by DGPT;
c) filing and examination of oppositions and appeals related to marks with DGPT Board of Appeals;
ç) publication of data with regard to marks in the Industrial Property Gazette by DGPT;
d) filing of the applications for the international registration of marks and their examination by DGPT.
2. Definitions
2.1 For the purpose of this regulation, the following terms shall mean:
a) "Trademark or service mark" (hereinafter referred to as the “mark”) means any sign or combination of signs graphically presented, which serves to distinguish the good or services of a legal of natural person from those of another legal or natural person and which meets the requirements of Law No 9947 of 7 July 2008, “On Industrial Property” (hereinafter referred to as the “Law”).
b) “Nice Classification” means the international classification of goods and services for the purpose of mark registration, approved by the Nice Agreement of 15 July 1957 and all additional amendments.
c) “Madrid Agreement” means the agreement on the international mark registration of 14 April 1891, including additional amendments;
ç) “Madrid Protocol” means the protocol related to the Madrid Agreement, adopted on 27 June 1989, including additional amendments;
d) “International registration of the mark” shall be the registration of a mark based on Madrid Agreement or the Protocol of this Agreement for the registration of marks, of 14 April 1891, including additional amendments.
dh) “International Office” means the International Office of the World Intellectual Property Organization.
3. General principles
3.1 Any legal or natural person who produces or trades any kind of goods or who provides services shall be entitled to apply for the registration of a mark to DGPT.
3.2 DGPT shall examine the filed application and issue notifications and other acts, in conformity with the provisions of the Law and of this regulation.
3.3 DGPT actions with respect to such applications shall be based solely on documents in writing. Applications and any other type of documentation filed with DGPT shall be in print and in the Albanian language.
3.4 DGPT shall establish and manage the electronic database, which will store all the conducted actions with respect to marks.
4. Types of applications
4.1 Types of applications that may be filed with DGPT with respect to marks are as follows:
a) Application for mark registration through the FM 1 form (Annex 1 of the regulation)
b) Application for mark renewal through the FM 2 form (Annex 1 of the regulation)
c) Application for transfer of the mark ownership through the FM3 form (Annex 1 of the regulation)
ç) Application for the registration of the license contract of the mark through the FM4 form (Annex 1 of the regulation);
d) Application for the change of name of the mark owner, through the FM5 form (Annex 1 of the regulation);
dh) Application for the change of address of the mark owner, through the FM6 (Annex 1 of the regulation);
e) Application for the limitation of the list of goods of the registered mark, through the FM7 form (Annex 1 of the regulation);
ë) Application for the surrender of the registered mark through the FM8 form (Annex 1 of the regulation);
f) Application for the opposition to the registration of the published mark through the FM9 form (Annex 1 of the regulation);
g) Application for the appeal of DGPT decision on the refusal of the application through the FM10 form (Annex 1 of the regulation).
CHAPTER II FILING OF APPLICATION FOR MARK REGISTRATION
1. Filing of the application
1.1 The application for the mark registration shall be filed through FM1 form, which shall be signed by the applicant or his representative and is submitted to DGPT Protocol Office. The FM1 form may also be sent to DGPT by mail or via fax by the applicant or his representative. In the case of filing via fax, the applicant shall submit to DGPT within one month from the date of fax submission the original of the document, otherwise the application shall be considered unfiled.
1.2 The application file shall contain the list of the filed documents (file index), which shall be signed by the applicant or his representative.
1.3 Application shall be filed for the registration of a mark for one or several categories of goods and services that are ranked according to Nice International Classification.
1.4 On the day of receipt of FTG1 form for the registration of a geographic indicator, the DGPT Protocol Office shall note down on the form the filing date and hour of the application and the number of such application.
2.1 According to Article 145 (4) of the Law, the application for the registration of mark shall contain upon submission to DGPT the following elements:
a) the name and address of the submitter of the application;
b) the representation of the mark as to which registration is sought;
c) a list of the goods and/or services as to which registration is sought, grouped on the basis of the international classification for goods and services;
ç) a declaration claiming priority, if there is such a claim;
d) a document showing payment of the filing fee.
2.2 The image (reproduction) of the mark shall be in eight copies and shall be with the size determined by FM1 form. If the DGPT expert who examines the file (the examiner) considers that the mark reproduction is inappropriate, he shall require from the applicant to make the appropriate changes.
2.3 The list of goods and/or services shall be in compliance with the latest edition of Nice Classification.
2.4 The priority declaration may not be filed later than the filing date of the application for the registration of the mark and it shall contain: filing date of the earlier application, number of the earlier application and the office such earlier application was filed with. The priority claim shall be submitted through the FM1 form.
3. Additional documents and data contained in the application for mark registration
3.1 According to Article 145(5) of the Law, the application for the registration of a mark shall also contain:
a) name and address of the representative of the applicant;
b) signature of the applicant or of his representative;
c) for Albanian legal or natural persons, the document issued by the National Registration that certifies the exercise of commercial activity;
ç) power of attorney, where the application is filed by the applicant representative. The power of attorney shall have the applicant’s signature and, if the applicant is a legal person, his stamp;
d) in the case of a collective mark, the document on the rules of use of such mark;
dh) any relevant document or declaration requested by the examiner in the course of the examination of the application.
e) other elements that shall be included in the application for the registration of a mark are those contained in the FM1 form.
4. Filing of the priority document
4.1 If a claim of priority is filed, the applicant shall, within three months from the filing of the request, submit to DGPT the priority document, in accordance with Article 147 of the Law or the certificate issued by the respective authority of the fair where the goods and/or services have been exhibited, in accordance with Article 148 of the Law. The document of priority shall be submitted translated in the Albanian language and shall be notarized.
4.2 The applicant may claim priority over one or some goods and/or services or over all the category of goods and/or services, also by requiring different priority dates for each of them and by submitting the respective priority documents.
4.3 If the applicant fails to submit to DGPT the document of priority, provided by Article 147 of the Law or the certificate issued by the respective fair authorities, provided by Article 148, within three months from the filing date of the application, the claim for priority shall not be considered by DGPT.
4.4 The right to priority obtained on the basis of the provisions of the Law and of this regulation shall consider the date of priority as the filing date of the application for the registration of a mark with DGPT, solely for the purpose of establishing the application that enjoys a priority right. .
CHAPTER III OFFICIAL EXAMINATION OF THE APPLICATION
FOR MARK REGISTRATION
1. Order and terms of examination of the application
1.1 The filed application shall be examined in the order of submission to DGPT, in accordance with the requirements of Article 150 (1, 2, 3) of the Law.
1.2 The application shall be examined within three months from the date of its filing. In the course of this period, the examiner shall examine as to whether the application is in accordance with Article 145 of the Law and Chapter II of this regulation.
2. Examination of the application and recognition of the filing date
2.1 If the examination concludes that the application meets all the requirements of Article 145 of the Law and Chapter II of this regulation, DGPT shall file the application for the registration of the mark and shall issue the filing certificate, by recognizing this as the filing date, the DGPT, in accordance with point 1.4 of Chapter II of this regulation.
2.2 If the application fails to meet all the requirements provided by Article 145 of the Law and Chapter II of this regulation, DGPT shall notify the applicant to make the completions within three months from the notification date. The term for submitting completions may be extended with up to one additional month, if the applicant submits a request in writing based on reasonable grounds against payment of the designated fee. In any case, the request for term extension shall be submitted to DGPT prior to expiration of the three-month term established for the completion of the application.
2.3 Where the applicant makes the required completions within the defined term, DGPT shall file the application and shall issue the filing certificate within three months from the date where the applicant has completed the request, recognizing the filing date of application:
a) filing date of the application with DGPT in accordance with the provisions of point 1.4 of Chapter II of this regulation, if the shortcomings of the application consist in one of the components provided by Article 145 of the Law and point 2 of Chapter II of this regulation.
b) date of completion of the application if the shortcomings of the application consist in one of the components provided by Article 145 of the Law and point 2 of Chapter II of this regulation. In the case where the shortcomings of the application with respect to the components provided by Article 145 of the Law and point 2 of Chapter II of this regulation consist in errors that do not prejudice the essence of such components, the reception date of the application from DGPT shall be also the filing date of the application.
2.4 If the applicant fails to make the completions within the term provided by point 2.2 of this chapter, DGPT refuses to file the application for the registration of a mark and shall issue the notification for the refusal of filing.
3. Filing certificate
3.1 The filing certificate shall contain the following data:
a) Mark description;
b) Name and address of the applicant;
c) Filing date and number of the application;
ç) List of goods and/or services;
d) Protected colours (if any);
dh) Elements which are exempted from protection (if any);
e) Priority data (if any).
CHAPTER IV EXAMINATION OF APPLICATION ON ABSOLUTE GROUNDS
AND MARK REGISTRATION
1. Examination on absolute grounds for refusal
1.1 Following recognition of the filing date, within three months from the issuance of the filing certificate, the examiner shall examine the application as to whether it is in conformity with the requirements of Article 140, paragraph 2 and 3 and of Article 142 of the Law.
1.2 Signs referred to in Article 142, paragraph 1(b), (c), (f) and (g) of the Law may be considered as unprotected elements of the mark. If this is the case, the applicant shall declare in writing that they are exempted from protection.
1.3 In the course of examination, DGPT may require additional materials and documents from the applicant by sending him a notification in writing. The applicant shall submit the required documents to DGPT within two months from the notification date, otherwise the application shall be refused with a final decision and the applicant shall be notified on such refusal by a notification in writing, which contains the grounds for refusal.
1.4 Where the examination shows that the application fails to meet the requirements of Article 140, paragraph 2 and 3, and the requirements of Article 142 of the Law, DGPT shall refuse that application and shall notify the applicant by a notification in writing which contains the grounds for refusal.
2. Registration of the mark
2.1 In the case where no opposition is filed against the registration of the mark by third parties within three months from the publication date, DGPT shall issue the notification for the payment of the mark registration fee and shall ask the applicant to make the payment and submit to DGPT a copy the document that certifies such payment within one month from the date of receipt of the notification.
2.2 If the applicant fails to pay the registration fee within the established term, DGPT shall refuse the application for the registration of the mark and shall notify the applicant accordingly in writing.
2.3 In the case where the applicant pays the registration fee within the established term, DGPT shall register the mark in the register of marks and shall issue the registration certificate within three months from the date of payment of the fee.
2.4 DGPT shall publish the registered mark in the Industrial Property Journal.
3. Data contained in the mark registration certificate
3.1 A mark registration certificate shall contain:
a) name and address of the owner of the registered mark;
b) number of the application and registration number of the mark;
c) filing date, protection expiration date, registration date and the date of priority (if any);
ç) list of goods and/or services for which the mark has been registered;
d) image (reproduction) of the mark;
dh) protected colours (if any);
e) elements which are exempted from protection (if any);
ë) publication date of the mark.
4. Changes made to the application or its withdrawal prior to the mark registration
4.1 Where the application for the registration of a mark is under examination and a change of name and/or address of the applicant has occurred or the applicant has transferred the application rights to another party, DGPT shall, upon submission of the respective forms, of the documents proving the above changes and payment of the designated fee, register the mark in the register of marks with the new data, without changing the filing date of the application.
4.2. The applicant may request in writing the correction of any errors or inaccuracies contained in the mark registration application, in the case where they affect the name or address of the applicant or of his representative, or of any other inaccuracies which do not affect the essence of the application elements, insofar as the application is not registered in the register of marks. In no case shall the correction of inaccuracies in the list of goods and/or services imply the addition of new categories of goods and/or services or in the addition of specific goods and/or services within each category, but they shall only consist in specifying or restricting the existing ones.
4.3 Where the mark is not registered in the register of marks, the applicant may withdraw the application for the registration of the mark by submitting a request in writing to DGPT. Upon submission of such a request, the application shall be considered withdrawn.
4.4 The registration date of the mark shall be the date of issuance of the mark registration certificate by DGPT.
CHAPTER V PUBLICATIONS IN THE INDUSTRIAL PROPERTY JOURNAL
1. Types of publications
1.1 In accordance with Article 192, paragraph 3 of the Law, DGPT shall publish in the Industrial Property Gazette the data on the applications for registration of a mark, changes to the name, address of the mark owner, changes to the list of goods, surrender, repeal and revocation.
2. Publication of applications and registration of marks
2.1 Data published in the Gazette with respect to the applications and registration of a mark shall be:
a) number of application;
b) filing date;
c) data on priority, if any;
ç) name and address of the applicant;
d) image (reproduction) of the mark;
dh) elements exempted from the protection (if any);
e) protected colours (if any);
ë) list of goods and/or services.
2.2 Data published in the Gazette with respect to registered marks shall be:
a) number of application and registration number of the mark;
b) name and address of the mark owner;
c) filing date and expiration date of the protection of a mark;
ç) data on the priority (if any);
d) category of goods and/or services for which the mark has been registered.
CHAPTER VI OPPOSITION OF MARK REGISTRATION
1. Filing of the opposition
1.1 Individuals referred to in Article 152 of the Law may file an opposition against a published mark with DGPT within three months from the publication date, by submitting the following documents:
a) FM9 form of the opposition to the registration of a mark;
b) the document showing the payment of the opposition fee.
1.2 The opponent shall also submit the following documents:
a) power of attorney, in the case where the opposition is filed by the opponent’s representative;
b) documents proving that the opponent enjoys the rights provided for by Article of the law.
2. Examination of the opposition by the Board of Appeals
2.1 DGPT Board of Appeals shall examine the opposition and take a decision with respect to it within three months from the filing date.
2.2 In the case where the opposition fails to meet the requirements provided by point 1.1 of this chapter the Board of Appeals shall consider the opposition as unfiled and shall notify the opponent accordingly in writing.
2.3 In the case where the opposition fails to meet the requirements of point 1.2 of this chapter, the Board of Appeals shall ask the opponent in writing to complete such shortcomings within 30 days from the notification date, otherwise the opposition shall be considered as unfiled.
2.4 Where the opposition meets all the requirements of point 1 of this chapter, the Board of Appeals shall admit the opposition for examination and shall send a notification in writing to the mark applicant against whom such opposition is filed, asking him to submit his claims in writing with respect to the opposition and any other document supporting his claim within one month from the notification date.
2.5 In the course of examination, the Board of Appeals shall be entitled to ask the parties in writing to submit other additional materials and documents within one month from the notification date.
2.6 The Board of Appeals shall take a decision with respect to the opposition and shall notify the parties in writing with that regard. The decision of the Board of Appeals may be appealed to court within 30 days from the notification receipt.
3. Processing of the application after the decision on the opposition
3.1 Where the Board of Appeals decides to downturn the opposition and the decision is not appealed to court, a copy of the Board decision shall be included in the application file for the registration of the mark and the examiner shall continue with the procedure of registration of the mark in accordance with the requirements of the Law and of this regulation.
3.2 In the case where the Board of Appeals upholds the opposition and such decision is not appealed to court, a copy of the decision shall be included in the application file for the registration of the mark and the examiner shall send the notification on the refusal of registration.
3.3 In that case where the decision of the Board of Appeals with respect to the opposition against the registration of a mark is appealed to court, a copy of the final court decision shall be included in the application file for the registration of a mark and DGPT shall either refuse or register the mark, in accordance with the court decision.
CHAPTER VII CHANGE OF NAME AND/OR ADDRESS OF MARK OWNER
1. Filing of the application
1.1 The right holder owner of a mark may request to change his name and/or address in the register of marks, on basis of Article 161 of the Law. The application for the change of name shall be filed with DGPT through the FM5 form and the application for the change of address shall be filed through the FM6 form.
1.2 Together with the application, the applicant shall file the following documents:
a) the document showing the payment of the designated fee;
b) power of attorney, if the application is filed by the representative of the mark owner;
c) in the case where change of the mark owner name is required, the document proving such change.
2. Examination of the application by DGPT
2.1 DGPT shall examine the application for the change of name and/or address of the mark owner, if it is in conformity with the provisions of point 1 of this chapter and, if such application is incomplete, DGPT shall notify the applicant to make the appropriate completions within three months from the date of notification, otherwise the application shall be refused.
2.2 DGPT shall register the change of name and/or address of the mark owner in the register of marks and shall notify the applicant on the registration of such change within six months from the date in which the application meets all the requirements provided by point 1 of this chapter. The change shall be published in the Industrial Property Gazette.
CHAPTER VIII LIMITATION OF THE LIST OF GOODS AND/OR SERVICES
1. Filing of the application
1.1 The owner of a mark may require the limitation of the list of goods and/or services in the register of marks, in accordance with Article 161 of the Law. The application for the limitation of the list of goods and/or services shall be filed with DGPT through the FM7 form by the mark owner or his representative.
1.2 In addition to the application, the applicant shall also submit the following documents:
a) the document showing the payment of the designate fee;
b) power of attorney if the application is filed by the representative of the mark owner . 2. Examination of the application by DGPT
2.1 DGPT shall examine the application for the limitation of the list of goods and/or services as to whether it is in conformity with the requirements of point 1 of this chapter and, if the application is incomplete, it shall notify the applicant to make the appropriate completions within three months from the notification date, otherwise the application shall be refused.
2.2 DGPT shall register the limitation of the list of goods and/or services in the register of marks and shall notify the applicant on the registration of the change within six months from the date in which the application meets all the requirements provided by point 1 of this chapter. The change shall be published in the Industrial Property Gazette.
CHAPTER IX TRANSFERRING OWNERSHIP OF A REGISTERED MARK
1. Filing of the application
1.1 The application for transferring the ownership of a registered mark, provided by Article 162 of the Law, shall be filed with DGPT through the FM3 form by the existing or new mark owner.
1.2 In addition to the application, the applicant shall also submit the following documents:
a) the document showing the payment of the designated fee;
b) the power of attorney, if the application is filed by the representative of the mark owner;
c) ownership transfer act, which shall be notarized.
2. Examination of the application by DGPT
2.1 DGPT shall examine the application for transferring ownership as to whether it is in conformity with the requirements of point 1 of this chapter and, if such application is incomplete, DGPT shall notify the applicant to make the appropriate completions within three months from the notification date, otherwise the application shall be refused.
2.2 DGPT shall register the change of the ownership of the mark in the register of marks and shall notify the applicant of the registration of such change within six months from the date in which the application meets all the requirements provided by point 1 of this chapter. The notification for the change of the mark ownership shall be published the Industrial Property Gazette.
CHAPTER X REGISTRATION OF LICENSE CONTRACT
1. Filing of the application
1.1 The application for the registration of the license agreement on the registered mark, provided by Article 163 of the Law, shall be filed with DGPT by the mark owner through the FM4 form.
1.2 In addition to the application, the applicant shall also submit the following documents:
a) the document showing the payment of the designate fee;
b) power of attorney, if the application is filed by the mark owner;
c) the license agreement, which shall meet the requirements of Article 163, paragraph (2) and (4) of the Law.
2. Examination of the application by DGPT
2.1 DGPT shall examine the application for the registration of the license agreement as to whether it is in conformity with the requirements of point 1 of this chapter and, if such application is incomplete, DGPT shall inform the applicant to make the appropriate completions within three months from the notification date, otherwise the application shall be refused.
2.2 DGPT shall register the license agreement on the mark in the register of marks and shall notify the applicant on the registration of such license agreement within six months from the date in which the application meets all the requirements of point 1 of this chapter. The notification for the registration of the license agreement shall be published in the Industrial Property Gazette.
CHAPTER XI MARK RENEWAL
1. Filing of the application for mark renewal
1.1 The application for the renewal of a mark, provided by Article 164 of the Law shall be filed with DGPT by the mark owner through the FM2 and shall include also the document showing the payment of the renewal fee. In addition to the application shall be also published the following documents:
a) power of attorney if the application is filed by the representative of the mark owner;
b) image (reproduction) of the mark (4 copies) in the size determined by the FM2 form;
1.2 The application for renewal of the mark, which includes the FM2 and the document showing the payment of the designate fee, shall be filed with DGPT within six months from the expiration of the mark protection term. The expiration date of the protection term of the mark shall constitute. If the application is not filed within such term, it may be filed within an additional term of six months from the mark protection term, against the payment of an additional fee.
1.3 The list of goods and/or services included in the application for the renewal of a mark shall be identical with the list registered in the register of marks. In the case where the Nice Classification has changed following the mark registration, the mark owner shall refer to the latest edition of such classification in his application for renewal. If the mark owner has applied for renewal and has only paid the fee for some of the good or services for which the mark is registered, the mark shall be renewed only with respect to those goods or services. Changes made to the list of goods shall be reflected in the register of marks.
2. Examination of application by DGPT
2.1 DGPT shall examine the application for the renewal of a mark as to whether it is in accordance with the requirements of point 1 of this chapter and if such application is incomplete, DGPT shall notify the applicant to make the proper completions within three months from the notification date, otherwise the application shall be refused.
2.2 Where the application for mark renewal is compliant with the requirements of point 1 of this chapter, DGPT shall register the mark renewal in the register of marks and shall issue the renewal certificate within six months from the date in which the application meets all the requirements of point 1 of this chapter.
2.3 The mark renewal certificate shall contain:
a) name and address of the mark owner;
b) number of application and registration number of the mark;
c) filing date, date of expiration of the protection term, date of renewal and the date of priority (if any);
ç) list of goods and/or services;
d) image (reproduction) of the mark;
dh) protected colours (if any);
e) elements exempted from protection (if any).
2.4 DGPT shall publish the renewal registration in the Industrial Property Gazette.
CHAPTER XII REGISTRATION OF SURRENDER OF THE MARK
1. Filing of application to withdraw the registered mark
1.1 The mark owner or his representative shall file an application for the registration of surrender from the registered mark, provided by Article 172 of the law through the F8 form.
1.2 In addition to the application, the applicant shall also submit the following documents:
a) document showing the payment of the designate fee;
b) power of attorney where the application is filed by the representative of the mark owner;
c) if a license agreement is included in the register for such mark, the declaration of the licensee affirming that he is aware of the application for surrender;
ç) if there are judicial proceedings in place with respect to the right of protection of the mark, a declaration issued by the plaintiff through which he agrees to the registration of surrender.
2. Examination of the application by DGPT
2.1 DGPT shall examine the application for the surrender of the registered mark as to whether it is in conformity with the requirements of point 1 of this chapter and, if such application is incomplete, DGPT shall notify the applicant to make the proper completions within three months from the notification date, otherwise the application shall be refused.
2.2 DGPT shall register the surrender of the mark in the register of marks and GDPT shall notify the applicant on the registration of surrender within six months from the day in which the application meets all the requirements of point 1 of this chapter. The notification on the registration of surrender shall be published in the Industrial property Journal.
CHAPTER XIII APPEALS WITH THE BOARD OF APPEAL
1. Filing of the appeal application
1.1 Within two months from the date of receipt of the notification on the refusal of the application, as provided by Articles 150 (5) and 154(4) of the law, the applicant shall have the right to appeal the decision of DGPT to the Board of Appeals by submitting to DGPT:
a) FM10 form of appeal signed by the applicant or his representative;
b) document showing the payment of the designate fee for the appeal;
c) power of attorney if the appeal is filed by the representative of the applicant.
2. Examination of the appeal by DGPT Board of Appeals
2.1 The Board of Appeals shall first examine the application as to whether it meets the requirements of point 1.1 of this chapter and if such requirements are met, the Board of Appeals shall notify the submitter of the appeal in writing that his application is considered unfiled.
2.2 Where the request for appeal meets the requirements of point 1 of this chapter, the Board of Appeals shall examine the appeal within three months from the filing date and shall inform the submitter of the appeal in writing with respect to the taken decision. The submitter of the appeal is entitled to appeal to court the decision taken by the Board of Appeals, in accordance with the requirements Article 155, paragraph 4 and 5 of the Law.
2.3 In the course of examination, the Board of Appeal shall have the right to ask the applicant who is appealing the decision to provide additional materials and documents within one month from the date of notification.
3. Processing of the application after the decision on the appeal
3.1 Where the Board of Appeals decides to uphold the appeal and the decision is not taken to court, a copy of the decision shall be included in the a copy of the Board decision shall be included in the application file for the registration of the mark and the examiner shall continue with the procedure of registration of the mark in accordance with the requirements of the Law and of this regulation.
3.2 Where the Board of Appeals decides to downturn the appeal and the decision is not challenged in court, a copy of the Board decision shall be included in the file of application for the registration of the mark and the refusal shall be final.
3.3 In that case where the decision of the Board of Appeals is appealed to court, a copy of the final court decision shall be included in the application file for the registration of a mark and DGPT shall either refuse or register the mark, in accordance with the court decision.
CHAPTER XIV OTHER DOCUMENTS WITH RESPECT TO MARKS ISSUED BY DGPT
1. Extracts and investigations issued from the register of marks
1.1 Pursuant to Article 192(2) and 194 of the Law, DGPT shall issue for the interested parties extracts from the register of marks, and responses to applications for investigation.
1.2 The application for the issuance of a register extract with respect to a registered mark shall be filed with DGPT in writing and shall be accompanied with the document showing the payment of the designated fee, otherwise the applicant shall be considered as unfiled. The register extract issued by DGPT shall contain all the data with respect to the mark and the history of the changes it has been subject to.
1.3 The application for investigation of a mark shall be filed with DGPT in writing and it shall also contain the document showing the payment of the designated fee, otherwise the application shall be considered as unfiled. DGPT shall notify the applicant in writing with respect to the outcome of the register of marks.
2. Duplicates and the document of priority
2.1 The owner of a registered mark is entitled to apply for a duplicate of the mark registration certificate, for the certificate of mark renewal or the other notifications issued by DGPT with respect to the registration of changes in the register of marks through a request in writing, which shall be accompanied with the document showing the payment of the respective fee and with the power of attorney, in the case where the application is submitted by the representative of the mark owner, otherwise the application shall be considered as unfiled.
2.2 The applicant who has filed an application for the registration of a mark with DGPT shall have the right to claim a document for the priority of the mark within six months from the filing date of the application for the registration of the mark, subject to the payment of the designated fee.
2.3 The priority document that is issued by DGPT shall contain the following data:
a) filing date of the application for the registration of a mark;
b) number of application;
c) name and address of the applicant;
d) reproduction of the mark for which the application has been filed;
ç) list of the goods and/or services.
3. Correction of acts by DGPT
3.1 In the case where DGPT issues acts that contain errors or inaccuracies, which do not result from the applicant or the owner of the mark, DGPT shall correct them based on a request in writing submitted by the applicant or the owner of mark. DGPT shall re-issue the corrected act, after the submission by the applicant or owner of the mark of the original act which requires correction. DGPT shall reflect the correction in the register marks and shall publish such correction in the Industrial Property Gazette.
CHAPTER XV APPLICATION FOR THE INTERNATIONAL REGISTRATION OF MARKS
1. Filing of the application for international registration
1.1 The owner of a registered mark in Albania or the applicant may file an application with DGPT, subject to a designated fee, with respect to the international registration of that mark, based on Madrid Agreement, through the respective official form designated by the International Office.
1.2 The owner of a registered mark in Albania or the applicant may file an application with DGPT, subject to a designated fee, with respect to the international registration of that mark, based on the Madrid Protocol, through the respective official form designated by the International Office.
1.3 The owner of a registered mark in Albania or the applicant may file an application with DGPT, subject to a designated fee, with respect to the international registration of that mark, based on Madrid Agreement and Madrid Protocol, through the respective official form designated by the International Office.
2. Examination of the application for international registration
2.1 DGPT shall examine the application for the international registration of a mark and it shall notify the applicant to make the completions within one month from the notification date, if it finds that such application has the following shortcomings:
a) the application for the international registration has not been filed through the designate form;
b) the list of goods and/or services in the international application is not compatible with the list of registration or of the original application filed with DGPT;
c) the mark which is subject of the international application is not identical to the registration mark or the original application filed with DGPT;
ç) any data with respect to the mark in the international application, except for the elements exempted from the application, or the claim on the colours sought for protection, if such data or claims are not included in the registration or the original application filed with DGPT;
d) the applicant has no legal rights to file the application for international registration through DGPT;
dh) the application form is not signed by the applicant;
e) the application is not in the language provided by the Madrid Agreement or Protocol;
f) the applicant has not paid the respective fee. If this is the case, DGPT shall consider the date of payment as the filing date.
2.2 If the applicant fails to complete shortcomings within the established term, DGPT shall refuse to submit the application to the International Office and shall notify the applicant accordingly.
2.3 Where the application for international registration meets the requirements provided by point 2.1 of this chapter, DGPT shall determine the filing date of the international application, and it shall sign such application and submit it to the International Office together with the certificate provided for by Article 3(1) of Madrid Protocol.
2.4 In those cases where the application for the international registration of a mark is filed prior to the registration of that mark, the registration date shall be considered as the filing date for the international registration.
2.5 Applications for renewal, ownership transfer, limitations to the list of goods, the license agreement, changes to and cancellation of the license agreement, as well as the changes to the name and/or address of the owner of international mark shall be directly filed with the International Office.
CHAPTER XVI APPLICATION FOR FURTHER EXTENSION OF TERRITORIAL PROTECTION
OF INTERNATIONAL MARK
1. Filing of the application for further protection extension
1.1 The application for further extension of the territorial protection of the international territorial mark extension of territorial protection of the international mark shall be filed with DGPT by the mark owner through an officially recognized form by the International Office. The application shall be filed in the same language as that of the filed application for the international registration of the mark.
2. Examination of the application for further extension of protection
2.1 DGPT shall examine the application for further extension of territorial protection of the international mark and it notifies the applicant to make the completions within one month from the notification date, if it finds that such application has the following shortcomings:
a) the application has not been filed through the designate form or does not contain all the data required in such form;
b) the application does not have the number of the international register on the basis of which the territorial extension is required;
c) the list of goods and/or services in the international application is not compatible with the international registered list of goods and/or services;
ç) the applicant has no legal rights to file the application for further extension of territorial protection through DGPT;
d) the application is not in the language provided by point 1 of this chapter.
2.2 If the applicant fails to make the completions within the established term, DGPT shall refuse to submit the application to the International Office and shall notify the applicant accordingly.
2.3 Where the application for international registration meets the requirements provided by point 2 of this chapter, DGPT shall notify the applicant and submit the application to the International Office.
CHAPTER XVII INTERNATIONAL REGISTRATION OF MARKS FOR WHICH TERRITORIAL
EXTENSION OF PROTECTION IN ALBANIA HAS BEEN SOUGHT
1. Effects of international applications and registrations
1.1 The international application which determines Albania ass the state for the territorial extension of mark protection shall be processed in the same way as the application for the registration of a national mark, from the registration date provided by Article 3(4) of Madrid Agreement and Protocol or from the date of further extension of protection to Albania, provided for by Article 3ter (2) of Madrid Agreement and Protocol.
1.2 That international registration which determines Albania as the state for the territorial extension of mark protection shall enjoy the same protection as the mark registration by DGPT, based on the Law, from the date referred to in point 1 of this chapter, except for the case where the registration has been refused by DGPT, in accordance with Article 5 (1) and (2) of Madrid Agreement.
2. Examination of international applications
2.1 Where the international application fails to meet the requirements of Article 140(2) and (3) and the requirements of Article 142 of the Law or where an opposition has been filed against such application, according to Article 152 of the Law, DGPT shall inform the International Office in accordance with the procedures and terms defined by the Madrid Agreement and Protocol (provisional refusal). The notification that is sent to the International Office shall foresee a three- month term for the applicant of the international application, within which the latter shall submit his arguments to DGPT with respect to such provisional refusal.
2.2 In that case where the applicant fails to submit his arguments to DGPT within the term provided for by point 3 of this chapter, DGPT shall notify the International Office that the extension of the protection of the international mark in Albania is refused, in part or in whole (final refusal). In the case where the applicant submits to DGPT his arguments within the term established by point 3 of this chapter, DGPT shall proceed with the examination of the application in accordance with the Law provisions and shall notify the International Office on the refusal of the application (final refusal), or of the rejection of the provisional refusal.
3. Opposition against the protection extension of the international mark in Albania
3.1 The procedures for filing and examination of the opposition to an application or international registration that designates Albania as a state for the extension of territorial protection of the mark shall be the same as those provided for by the Law and this regulation with respect to national registrations and applications.