Trademark Practice and Forms Treatise Chapter - Bosnia and Herzegovina

Prepared by:
Tarik Prolaz,
PETOŠEVIĆ

Disclaimer: THE INFORMATION PRESENTED IN THIS ARTICLE IS PROVIDED “AS-IS” AND WITHOUT WARRANTY OF ANY KIND, EITHER EXPRESSED OR IMPLIED.

Trademark Law had not entered into force until the date of completion of this article. It was expected to enter into force in on January 1, 2011. Accordingly, the practical information, including the fees, procedure and the time frame for the protection of trademark rights in Bosnia could not be given. This information is to be included in the next edition.

OVERVIEW: THE BASICS

COUNTRY FACTS

Location

Bosnia and Herzegovina is a country in Southeastern Europe, bordered by Croatia to the north, west and south, Serbia to the east, Montenegro to the southeast, and 26km of Adriatic Sea coastline to the south.

Major Cities

Sarajevo (capital), Banja Luka, Mostar, Tuzla, Zenica, Bihać

Government

Federal democratic republic

Legal System

Civil code

Language

Bosnian, Serbian, Croatian

Currency

Convertible Mark (BAM)

Est. GDP

$29.5 billion (2009 est.)

Real growth rate: 5.4% (2008 est.)

Per capita (PPP): $6,400 (2009 est.)

Economic Sectors

Agriculture: 9.5%

Industry: 26%

Services: 64.5% (2006 est.)

Source: CIA Factbook

International IP Agreements

• WIPO Convention
• Paris Convention
• Madrid Agreement
• Madrid Protocol

Applicable Classification

• International Classification (Nice)

Home Registration

No requirement

Right to Trademark

First to file

Duration of Protection

Initial Period: 10 years from date of registration

Renewal Period: 10 years

Registration Priority

Paris Convention priority available

OVERVIEW: POLICIES AND TRENDS

Trade and Regulatory Climate

The political changes in the former Soviet Union and the former communist countries in Central and Eastern Europe in the late 1980s and early 1990s brought about a new category of countries: “countries in transition”, to which Bosnia belongs. These countries face the same economic and political challenges. Some of the common challenges include:
* Switching from planned to market economies;
* Major changes in the field of business and economics;
* Change in the political environment;
* Changes in culture and cultural patterns.

Bosnia is a classic example of a country in transition, with all the “childhood illnesses” of a young democratic and business society, further complicated by the complex post-war structure of the country, including 3 dominant ethnicities and the tight shell imposed by the Dayton Peace Agreement.

Accession to the EU is one of the goals that is not disputed by any of the ethnic or political groups in the country. Many steps have been taken on this path, such as ratification of the Stabilization and Association Agreement (SAA), free trade agreements with the neighboring countries, CEFTA, etc.

This certainly will help in the further development of the country and its transition to a full democratic society, as an equal member of the European family.

Why Register Locally?

Legal remedies are available with respect to infringement of unregistered marks. However, due to strict ethno-political and regional division factors, these remedies are at the local government level, are not uniform and often are not sufficient to fight and overcome unauthorized use of one’s unregistered mark.

IP laws are state-level laws, valid throughout Bosnia and Herzegovina. The Court of Bosnia and Herzegovina has competence over all criminal aspects of trademark infringement cases and, generally, more legal remedies are available and more easily enforceable.

Furthermore, Article 49 of the Trademark Law gives the registered owner the right to prohibit third parties from using the mark in trade without his consent in similar or even dissimilar products under certain conditions.

The Future

Bosnia and Herzegovina has begun the process of harmonization of its legislation with the EU legislation, “acquis communitaire”. Following the recent worldwide trend, the earlier Industrial Property Law, as a single law regulating all forms of industrial property, was replaced with a whole set of new laws with legal regulations that are harmonized with the requirements of SAA and TRIPS. We expect that the draft law on customs procedures for protection of IP rights, which was prepared by the Customs and Taxation Authority of Bosnia and Herzegovina, will enter into force in year 2012. This will further enhance the system of protection of all IP rights and will hopefully give a much-needed boost to the national economy and the overall system of IP-rights protection.

REGISTRATION REQUIREMENTS

What Is a Mark?

According to the Trademark Law, a trademark is a mark used in the commerce to identify a particular product and differentiate it from other products. The mark must be graphically presentable and can comprise of words including personal names, designs, letters, numerals, images, shapes of goods or their packaging, color combinations or combinations of all the afore said elements .

Which Marks May Be Registered?

Trademark for Goods

Any mark that is capable by itself of distinguishing the goods of one company from those of other companies.

Trademark for Services

Any mark that is capable by itself of distinguishing the services of one company from those of other companies.

Collective Mark

Any mark may be registered as a collective trademark if it fulfils the trademark registration requirements. It is granted to the associations of producers or service providers and is used by the members thereof.

Certification Mark

Any mark may be registered as a certification trademark if it implies that the goods or services in relation to which it is being used are certified by the proprietor of the mark as to their quality, accuracy or any other feature including their origin or ingredients or, if the mark relates to goods, the method of their production, and if it relates to services, the method of their performance . The use of certification marks is under supervision of the proprietor. However, no party can be restrained from the use of a certification mark as long as it has the necessary characteristics and is used under the general provisions of the certification mark regulation agreed.

Color Marks

Marks in colors and comprising combinations of colors are registrable. Single colors, generally, are not acceptable.

What Cannot Be Registered?

The following cannot be registered as a trademark in Bosnia and Herzegovina.

Absolute Grounds

Marks That Are Immoral or Contrary to Public Policy

A mark or part of a mark will not be registered, or if registered may be declared void, if it is scandalous or any part of it is immoral or contrary to public policy.

Nominative or Descriptive Marks

This group includes:

• Marks That Cannot be Graphically Presented;

Comment: Only marks that can be presented by words including personal names, designs, letters, numerals, images, shapes of goods or their packaging, color combinations or combinations of all the aforesaid elements can be registered. Sounds and scent marks are not registrable.

• Marks that are devoid of any distinctive character;
• Marks that consist exclusively of signs or indications that serve as the designation of the kind, quality, quantity, purpose, value, geographical origin, or time of production of the goods or provision of the services or other characteristics of the goods and/or services;
• Marks that consist exclusively of a shape resulting from the nature of the goods themselves; marks that consist exclusively of a shape necessary to acquire certain technical result; or marks that consist exclusively of a shape that acquires substantial value to the product.

Identical Mark

A mark that is identical to an existing trademark and is proposed for identical goods and/or services cannot be registered. Well–known marks enjoy broader protection. A mark that is identical to a well-known mark in Bosnia and Herzegovina cannot be registered even for different goods and/or services. The law also prohibits transcriptions, transliterations or imitations of well-known marks. The Bosnian PTO does not allow “letters of consent”.

Marks with Prohibited Content

Marks that contain prohibited content:
* Marks of such a kind as to deceive the public in any way, but especially as to the nature, quality or geographical origin of the goods or services;
* Marks that contain state or other public coat of arms, flag or emblem, name or abbreviation of a country or an international organization and imitations thereof, except if used under consent of the competent authority of the state or the organization;
* Marks that contain name or abbreviation, coat of arms, emblem or any other official insignia of Bosnia and Herzegovina, the entities, the cantons, the District or represents an imitation thereof, unless under consent of the competent authorities;
* Marks that represent or imitate national or religious symbols;
* Marks that are usually used for marking wines and contain or comprise of geographical indications for wine; marks for spirits that contain or comprise of geographical indications for spirits;
* Marks that contain or comprise of geographical indications valid in Bosnia and Herzegovina.

Relative Grounds

Similar Marks

This group includes marks that are identical to an earlier trademark for similar goods or services or a similar mark for the goods and/or services that are identical to an earlier trademark registration. Another condition for similarity is likelihood of confusion, that is, a trademark that might confuse the public as to its relation to an existing trademark, because of its identity or similarity with the existing mark and the identity or similarity of the goods or services designated by the two marks.

Marks with Prohibited Content

• Marks that violate an earlier copyright or registered industrial design;
• Marks that are identical or similar to an earlier registration which lapsed (was not renewed), under condition that less than 2 years have passed from the expiry date. This does not apply if the owner of the earlier registration gives specific consent for the registration or if the earlier registered trademark was not used in Bosnia.
• Marks that violate the right to the name of a famous person or any other individual name that existed before the priority/application date;
• Marks registered in bad faith and contrary to the public policy.

Who Can Register?

Natural and artificial persons that handle trademark registration procedures before the PTO of Bosnia and Herzegovina must be duly registered in the Register of Representatives . Foreign natural or artificial persons must be represented by a representative registered in the Register of Representatives. Domestic natural and artificial persons can represent themselves. Natural and artificial persons must meet the prescribed criteria in order to be registered as representatives.

Priority Registration

Priority registration in accordance with the Paris Convention may be claimed if the first application for registration in a Convention country was filed within six months of the national Bosnian application.

TRADEMARK REGISTER

Kinds of Registers

The PTO of Bosnia and Herzegovina maintains three registers, namely:

• Register of Trademark Applications;
• Register of Granted Rights;
• Register of Representatives.

The registers are unified and kept in electronic form. The registers are considered of public interest and are thus available to the public.

Exclusive Rights

Registration of a trademark gives the right holder exclusive rights. The proprietor of a trademark is entitled to prohibit:

• The use of an identical mark by a third party for goods/services that are identical to the ones the trademark is registered for;
• The use of an identical or similar mark for goods/services identical or similar to the goods/services the trademark is registered for, under the condition that such use can cause confusion and false connection of the marks;
• A mark identical or similar to the trademark for goods or services dissimilar to those for which the trademark has been registered, if the trademark enjoys well-known reputation in Bosnia and Herzegovina.

The use mentioned above includes display of the mark on goods or packaging thereof; the offering of goods, trading or possession for trade and the offering or provision of services under the mark; the import, export or transit of goods under the mark and its display on printed materials and advertising. Where a registered trademark is reproduced in a dictionary in a manner that implies it is a generic term, the owner of the trademark may require from the publisher, editor or distributor of the dictionary that a corresponding note be included, at the latest, in a reprint.

Exhaustion of Right

The trademark right shall not entitle the proprietor to prohibit its use in relation to goods that have been put on the market .

Limitation of Exclusive Rights

A trademark right owner cannot prohibit a third person from using an identical or similar mark if the mark represents the trade name or the name of a third person, acquired bona fide before the date of the granted priority of the trademark.

Furthermore, the trademark proprietor cannot prohibit any person from using in the course of trade and in accordance with the principled practices:

• His own name or address;
• Indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production, or other characteristics of the goods or services;
• A sign protected by a trademark where its use is necessary to indicate the intended purpose of the goods or services, in particular, where spare parts or accessories are concerned.

A trademark right owner shall not prohibit any other person from using an identical or similar sign to designate goods or services of other kind, unless a well-known trademark is concerned. The holder of a registered well-known trademark may prohibit another person from using an identical or similar sign to designate goods or services, respectively, that are not similar to those for which a trademark is registered if the use of such a sign would indicate a connection between those goods or services and the holder of the protected well-known trademark, and if there is a likelihood that the holder of the well-known trademark would suffer damage by such use.

Acquisition and Validity of a Trademark

A trademark is acquired by its entry in the Register of Trademarks and is valid from the filing date of the application. The trademark validity period is ten years from the filing date of the application and may be extended indefinitely.

INITIAL REGISTRATION

Prescribed procedural steps

Search

This is not mandatory, but it is recommended. Search requests can be filed by an authorized representative, or, in the case of domestic natural and legal persons, personally.

Application

Again, an application can be filed by an authorized representative or personally (for domestic natural and legal persons). Applications must contain the particulars prescribed by the Trademark Law. Minimum requirements necessary to obtain a filing date and serial number are:

• Request filed on the official form;
• Representation of the mark;
• List of goods and services.

Payment of fees, Powers of Attorney filings and any other additional documents can be filed subsequently. Fees can be paid immediately or upon an official action issued by the PTO of Bosnia and Herzegovina.

Action by the Registrar

The Registrar of Trademarks may accept the application, object to it or impose conditions or restrictions (i.e. request a disclaimer letter). Applications are examined only on absolute grounds.

Publication and Opposition

Complete applications are published in the Official Gazette. Interested parties are given a 3-month deadline as of the publication date to file an opposition action. Oppositions must be filed in the prescribed form and include:
* The name and surname or the company name of the opponent and his address or business seat;
* A detailed explanation of all the grounds and evidence on which the opponent bases his objection and by which he proves his status of an interested party;
* All the published data relating to the application against which an objection is being filed, including the number of the application, the name, surname and address, or the company name and business seat of the applicant, and a representation of the sign applied for with a list of goods and services;
* An executed power of attorney, if the objection is filed through a representative.

REGISTRATION FORMS

REQUIRED INFORMATION

Trademark Application Form (English version)

Applicant

Name and address of the Applicant

Mark

• Reproduction of the mark;
• List of goods and services (submitted in a separate document, only the classes are indicated on the filing form);
• Priority date, country and number – if claimed.

Agent

Name, address and assigned agent number have to be provided.

PTO of Bosnia and Herzegovina accepts a signed Power of Attorney, no additional notarization or legalization is required. Applications have to be filed on the below forms in one of the official languages of Bosnia and Herzegovina (Bosnian, Croatian, Serbian).

Renewal Form (English version)

Applicant

Name and address of the Applicant

Mark

• Registration number;
• A statement whether the renewal is requested for all goods and services or only specific goods from the original registration.

Agent

Name, address and assigned agent number have to be provided.

RESOURCES

Government Offices

Institute for Intellectual Property of Bosnia and Herzegovina

Kralja Petra Krešimira IV8a

88000 Mostar

Bosnia & Herzegovina

Tel: +387 36 33 43 81

Fax: +387 36 31 84 20

Email

Publications

Trademark Law (Official Gazette of Bosnia and Herzegovina No. 53/10)