Trademark infringement: how to recognise it and what legal remedies you have

A registered trademark is worth as much as your ability to protect it. When someone sells products under your name, uses a logo that can be confused with yours or opens a business with a very similar name, your reputation suffers and customers are confused. This article explains in general terms what infringement is and which remedies exist; it does not replace legal advice on your case.

What trademark infringement is

The owner of a registered trademark has the exclusive right to use it and to prevent third parties from using in the course of trade, without the owner's consent:

• an identical sign for identical goods or services;
• an identical or similar sign for identical or similar goods or services, where there is a likelihood of confusion on the part of the public.

For well-known trademarks protection is broader: they are protected even beyond the goods for which they are known, against uses that take unfair advantage of their reputation. You cannot register “Rolex” for ice cream, even though Rolex makes watches.

The most common forms

• Counterfeiting: products that copy your trademark and are sold as originals.
• Imitation: names or logos that are not identical but are so similar that the buyer is confused.
• Online use: online shops or social media profiles that use your trademark without permission.
• Applying for a similar trademark: someone tries to register a sign of their own that can be confused with yours.
• Unauthorised registration by a representative: an agent or partner who registers your trademark in their own name, without permission.

What is not infringement

Not every use of your trademark by others is prohibited. Under the principle of exhaustion of rights, once an original product bearing your trademark has been put on the market by you or with your consent, you cannot prevent the resale of that item: second-hand shops or resellers may sell original products without your permission. Likewise, a similar name for completely unrelated goods usually does not create a likelihood of confusion – except in the case of well-known trademarks.

First steps when you notice an infringement

1. Document it: photographs, dated screenshots, purchase invoices, addresses of shops or websites.
2. Check your registration: does your trademark cover the territory – Albania, Kosovo – and the goods or services in question?
3. Do not act in haste: unfounded public accusations can backfire on you.
4. Talk to your representative about the most suitable route and keep communication within the platform.

Written notice and settlement without court

Once you have documented the infringement, a common step is a written notice to the other party, prepared by your representative, asking them to stop the use. Sometimes the case is resolved at this stage, without going to court – e.g. when the other party did not know that the trademark was registered. When it is not resolved, you still have the remedies we explain below, with the evidence you have gathered.

Online infringements

On the internet, infringements spread quickly, but they also leave traces. Keep the page addresses, screenshots with the date and time, profile names and order details. Many online platforms have their own procedures for reporting trademark infringements; they work better when you have a trademark registered for the territory and the goods in question.

Remedies before the trademark office

• Opposition against a new application, within 3 months of publication.
• Invalidity: a request for a trademark that should not have been registered to be declared invalid.
• Revocation: a request against a trademark that has not been genuinely used for 5 years without a justified reason.
• Recovery of a trademark that a representative has registered without permission.

Remedies before the courts

The owner may go to court to seek an order stopping the infringement, damages and the destruction of goods that infringe the trademark. The new Albanian trademark law is also aligned with EU Directive 2004/48/EC on the enforcement of intellectual property rights. In Kosovo, enforcement is sought under Kosovo law, through the courts of Kosovo.

Customs: stopping counterfeits at the border

In Albania as well as in Kosovo, the owner of a registered trademark may request the cooperation of customs to stop goods that infringe the trademark at the border. If someone imports shoes bearing a counterfeit of your trademark, you can request that customs detain and destroy them. At international level, the TRIPS Agreement requires every member country of the World Trade Organization to provide civil, criminal and border measures against infringements.

When you are the one accused

If you receive a notice that you are infringing someone else's trademark, do not ignore it and do not react in haste. Check the other party's trademark in the register: its status, classes, dates and territory. Sometimes their trademark has expired, covers other goods or does not apply in the country where you operate. Talk to your representative before replying.

Prevention costs less

• Register the trademark in the right classes and in every territory where you sell.
• Use it regularly and keep evidence of use.
• Renew it on time.
• Monitor new applications and companies with a similar name, so that you can act within the deadlines.

Services on trademark.al

Under “Services”, the “Opposition & Legal Protection” group includes opposition, invalidity, revocation, appeal and restoration of a time limit, while the “Rights, Security & Enforcement” group includes the “Infringement / Enforcement” service – action against infringement or copying of the trademark on the market – and the recovery of a trademark registered without permission by a representative. Prices are set by TMA and you see them before payment. We explain monitoring in Trademark monitoring, and you will find specific decisions in Precedents.