Registration and useOwnership of marks
Who may apply for registration?
Any domestic or foreign natural or legal person.Scope of trademark
What may and may not be protected and registered as a trademark?
A trademark may protect any sign that is capable of distinguishing identical or similar goods or services in the course of trade and that may be represented graphically, such as words, including personal names, drawings, letters, numerals, images, the shape of products or of their packaging, arrangement of colours, three-dimensional forms or the combination of such elements. The Law on Trademarks does not provide for the protection of non-traditional marks.
Trademarks can be registered as individual, collective and guarantee (certification) trademarks.Unregistered trademarks
Can trademark rights be established without registration?
Unregistered trademarks are protected in Bosnia and Herzegovina if the Institute for Intellectual Property of Bosnia and Herzegovina (BiH) or a court of law has ruled that they enjoy a well-known status in Bosnia and Herzegovina, which effectively excludes trademarks that are well known only in other jurisdictions from this kind of protection. The protection of well-known trademarks is also provided under article 6-bis of the Paris Convention for the Protection of Industrial Property.
Under article 91 of the Law on Trademarks, unregistered marks are further protected against later marks where a court of law rules that an application for an identical sign was filed or a sign was registered contrary to the principle of good faith, or in breach of a legal or contractual obligation.
A certain level of protection is also awarded to unregistered rights under the Law of Internal Trade of the Federation of Bosnia and Herzegovina and of the Republic of Serbia, both of which provide protection against the unauthorised use of another person’s name, company name, trademark, mark or sign or other external features if this creates, or may create, confusion in the market.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
Foreign trademark registrations are not recognised in Bosnia and Herzegovinian jurisdiction, except where their well-known status in Bosnia and Herzegovina has been recognised, by the BiH patent and trademark office. However, the BiH is strict in its assessment of the requirements to qualify as a well-known mark under article 6-bis of the Paris Convention.
The owners of well-known marks enjoy the same rights as owners of registered trademarks, provided that their mark’s well-known status has been determined by the BiH or a court, as described above.
The recommendations of the World Intellectual Property Organization WIPO on well-known marks are generally applied because the local law does not lay down specific criteria for determining if a mark is famous or well known.
The owners of famous marks enjoy broader protection than owners of other marks, in that protection extends to goods and services not covered by the registration. A trademark application that amounts to a reproduction, imitation or transliteration of a famous trademark will be refused on the grounds of an opposition regardless of the goods or services to which it relates.The benefits of registration
What are the benefits of registration?
Trademark registration gives the proprietor the right to exclusive use of the mark in respect of the goods or services covered by it. A registered trademark provides its holder with remedies against unauthorised use since a trademark holder can sue for infringement and obtain remedies such as recall of infringing objects from the channels of commerce, destruction of infringing articles and damages, among others.
Trademark registrations are identifiable property that can be transferred in their own right, like any other asset owned by a person or company. A registered trademark can be pledged as security and can be licensed. A trademark licence can be recorded on the trademark register, giving the licensee rights to institute legal proceedings in the event of infringement.
A registered mark can be found when others search the official register before choosing to commence using a particular name.
In legal proceedings relating to trademarks, a trademark registration is accepted as evidence of validity of the registration and the rights conveyed by registration.
A trademark registration offers its owner the possibility of establishing the customs watch as an enforcement mechanism against importation of unauthorised goods.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
A power of attorney is required. It can be simply signed, neither notarisation nor legalisation is required.
The representation of the mark is to be accompanied by an indication on whether the mark is a word mark, design mark or a three-dimensional mark. If the mark is in colour, the colour to be claimed must be specified. It is not possible to significantly change the appearance of the mark after the application has been filed, and any change of a distinctive element of the sign constitutes a significant change.
Electronic filing is available but must be followed by a hard copy.
Trademark searches are available. A request for a trademark search must be filed with the BiH because the databases are not yet available for public searching. The institute provides the search results within 15 to 20 days and the search opinion is based on the results provided.
The applicable fees are as follows:
- administrative fee - €10.22;
- procedural charges for a word mark - €20.45, followed by a €10.22 administrative fee; and
- design mark for classes 1 to 3 - €30.67, followed by an additional €2.56 per class after the third class.
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
In a straightforward process, the registration takes between 22 to 24 months from the filing date. The cost of registration is €40.90 in administrative fees and €314.44 in procedural charges. A trademark shall be acquired by the entry thereof in the Register of Trademarks and be valid from the filing date of the application. In case of objections by the examiner on absolute grounds, or if an opposition is filed by a third party, the time and cost would be increased.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
The Nice Classification system is followed, and multi-class applications are available.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The BiH conducts a formal examination and determines whether the application complies with all the formal requirements. After that, the application is only examined on absolute grounds and published for opposition by third parties. Letters of consent are acceptable but not used in practice since the relative grounds are not examined by the BiH. The applicants are given a deadline by which to respond to BiH rejections.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
It is not necessary to claim use or submit proof of use prior to registration. Foreign registrations can request union or exhibition priority. The registration is granted without use but the use must start within five years following the registration date, failing which the trademark can be cancelled based on a request by the third party for cancellation on grounds of non-use.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Once the trademark is registered, the symbol ® or R or 'Registered' may be used for the goods and services listed in the registration. By using the ® symbol, the others are given notice of the trademark holder's rights. Marking is not mandatory.Appealing a denied application
Is there an appeal process if the application is denied?
Any party adversely affected by a BiH decision has the right to file an appeal within 15 days of receiving the decision, including against cancellation and revocation decisions. The appeal is sent to the opposing party for a counterstatement.
Other parties to a procedure ended by an appealable decision are considered to be parties to the appeal procedure too.
The Board of Appeal decides on appeals in sessions, by majority vote, on the basis of submissions filed by the parties. The board may also order oral proceedings when it is deemed necessary.
A decision by the Appeals Committee is final but an administrative lawsuit can be filed against it.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
Trademark applications are published for opposition purposes. Any interested party is entitled to submit either an opinion against the registration based on absolute grounds or an opposition based on relative grounds, accompanied by the payment of the prescribed fees. All the documents and evidence supporting the opinion or opposition, including an original power of attorney, must be submitted at the time of filing. No additional filing is allowed.
Where the BiH finds an opposition based on absolute grounds relevant, it will notify the trademark applicant and request that the applicant submit a counterstatement within a prescribed time limit, usually 30 days.
If an opposition is filed based on relative grounds, the BiH examines it in terms of formal requirements. If the requirements are not fulfilled, the opposition is rejected. If the requirements are fulfilled, the institute will forward the opposition to the applicant and require a written response to be submitted within 60 days. If the applicant fails to respond, the opposition will be accepted. Where the applicant responds, the institute will examine both parties’ submissions and issue a decision. Either party can file an appeal against the decision.
A trademark shall not be granted if an opposition is filed and in the opposition proceedings it is established that the sign that is opposed falls under the following.
- Identical to an earlier protected sign of another person for similar goods or services, or is similar to an earlier protected sign of another person for the identical or similar kind of goods or services if, owing to such identity or similarity, there exist a likelihood of confusion in the course of trade, which includes the likelihood of association with an earlier protected trademark.
- The sign is identical or similar to, for the identical or similar kind of goods or services, a sign of another person that is well-known in the BiH, within the meaning of article 6bis of the Paris Convention for the Protection of Industrial Property (hereinafter, a well-known sign).
- In accordance with paragraph 3, article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights regardless of the goods or services to which it relates, constitutes a reproduction, an imitation or a transliteration of a protected sign of another person or the essential part thereof, that is known beyond any doubt by the participants in the course of trade in the BiH as a sign of high reputation (a famous trademark) used by another person to designate his goods or services, if the use of such a sign would take unfair advantage of the reputation of a famous trademark or be detrimental to its distinctive character or reputation.
- Its appearance or content infringes an older copyright or geographical indication or an earlier protected industrial design, the use of which would infringe the right to the personal name of a renowned person or the personal portrayal of any person if they came into existence before the date of a trademark application or the date of the granted priority claimed in the trademark application.
- Identical with, or similar to, an earlier trademark that was registered for identical or similar goods or services and has expired owing to the failure to renew the registration if less than two years have elapsed from the expiry of the earlier trademark, unless the holder of the earlier trademark gave consent for the grant of the later trademark or did not use his trademark.
- Filed contrary to the principle of good faith, conscientiousness and honesty.
The complete opposition procedure takes about six to nine months but can take longer if an appeal is filed since the decisions in this process can be appealed before the BiH's Board of Appeal within 15 days of receipt of the decision.
It is also possible for third parties to seek cancellation after registration.
A trademark registration can be revoked at any time if it is established that:
- the conditions for obtaining a trademark registration as provided by the Law on Trademarks had not been fulfilled at the time of registration;
- the mark has lost its distinctiveness;
- if the trademark owner or its successor in title uses the mark in such a way that may create confusion in the market with respect to the mark’s geographical origin, kind, quality or other characteristics of the goods or services to which it applies; or
- if a sign protected by a trademark has become contrary to morality or public order.
The right of use of a collective trademark and a guarantee or certification trademark may also be terminated if such a mark is used contrary to the general act governing its use.
A trademark registration may be declared null and void ex officio or upon the request of any interested person, the State Attorney of Bosnia and Herzegovina or the Ombudsman of Bosnia and Herzegovina, for the whole of the trademark's term of protection. However, when a prior intellectual property (IP) right is the basis for the revocation request, only the holder of such right, or a person authorised by it, can file a revocation request.
If the revocation is based on prior rights, the revocation proceedings can be instituted only within five years of the moment the petitioner had learnt of the use of the later trademark. If an opposition had previously been filed on the grounds of such prior rights and had been rejected, the revocation request cannot be filed on the same grounds, unless the bad faith of the trademark owner can be proven.
The request for revocation must be filed in writing, signed by the petitioner or its agent and indicate the number of the trademark for which revocation is sought, as well as whether the revocation is requested for the whole registration or only for some goods or services.
All evidence supporting the revocation request must be submitted in two copies, in original or certified copy, and accompanied with a sworn translation into a local language where necessary.
Once the BiH is satisfied that the request is formally correct, it will forward the request to the trademark owner, inviting the owner to submit a counterstatement within 30 days. This deadline can be extended upon a reasoned request by the trademark owner. If the trademark owner fails to respond, the request for revocation will be accepted. Where the trademark owner has responded, the BiH will examine the matter and issue a decision. The BiH may order oral proceedings if it considers them necessary (but seldom does in practice). Either party can appeal the decision.
The cost of filing an opposition registration is €102.26 in administrative fees and €153.39 in procedural charges.
The cost of filing of a cancellation request is €102.26 in administrative fees and €255.65 in procedural charges.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
A trademark shall be valid for 10 years starting from the filing date of the application, and subject to payment of the prescribed fees and filing of the renewal request its validity may be extended an indefinite number of times. Proof of use is not required at the time of trademark renewal.Surrender
What is the procedure for surrendering a trademark registration?
A trademark registration can be terminated before the expiry of the 10-year period for which the maintenance fees have been paid if the trademark owner surrenders its right. The trademark registration will stop on the day following the day on which the owner has submitted a declaration of surrender to the BiH.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
In principle, design marks, especially three-dimensional marks, can be protected as industrial designs if they satisfy the criteria of novelty and individual character. In addition, design marks that fulfil the requirements set out by the Copyright Law can enjoy copyright protection, which is acquired at the moment of creation, without any registration requirement.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
There are no specific provisions governing the protection of trademarks online. However, the regulations governing domain registrations specify that it is the responsibility of the domain name user to ensure that the domain name does not infringe the IP rights of third parties. Moreover, in the event of an infringement, the registrar does not decide on the matter and the parties are required to take the issue either to arbitration or a court.