Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Civil, criminal and administrative actions are available in cases of trademark infringement.

In accordance with the Law on Trademarks, administrative actions (eg, opposition procedures) are initiated before the BiH, whereas misdemeanour proceedings can be initiated before the customs authorities in order to prevent the import or export of counterfeit goods.

The Law on Trademarks also provides for civil protection against infringement. Civil court proceedings normally consist of several procedural steps, including:

  • the plaintiff’s submitting a lawsuit;
  • the defendant filing a written response to it;
  • a preliminary oral hearing; and
  • two or more further oral hearings.

While the Law on Trademarks does not speak of criminal liability in cases of infringement, the Criminal Codes of Bosnia and Herzegovina, of the Federation of Bosnia and Herzegovina and of the Republic of Serbia provide for:

  • criminal acts of 'forgery of trademarks, measures and weights' (article 208 of the Criminal Code of Bosnia and Herzegovina);
  • 'counterfeiting of trademarks, measures and weights' (article 259 of the Criminal Code of the Federation of Bosnia and Herzegovina); and
  • 'unauthorised use of another’s trade name, design or model' (article 272 of the Criminal Code of the Republic of Serbia).

There are no specialised courts or tribunals hearing such matters.

Procedural format and timing

What is the format of the infringement proceeding?

All types of evidence generally used are admissible (witness testimony, on-the-spot investigation, hearing the parties and expert opinion, etc) and presented to the court in the form of written documents or live testimonies. Civil proceedings typically last from one to three years. A single judge decides the case in the first instance based on the facts and applicable law. In case of an appeal, the case is decided in the second instance by a three-member council of judges.

Criminal procedures for infringement of industrial property rights are uncommon (the most common being in relation to counterfeiting) and are frequently treated as misdemeanours instead.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The burden of proof lies with the party in the interest of which it is that the court accepts the alleged fact as true, hence the burden of proof in the infringement cases lies with the claimant. The court may, at the request of the party, order that the evidence in the case be presented by the other party, acting in accordance with the rules of civil procedure, as in all other litigation matters. The other party is obliged to present evidence at the request of the court that they have at their disposal. The order may also apply to banking, financial and business documentation under the control of the opposing party.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

The following can file a trademark infringement action:

  • the trademark registration holder;
  • the applicant;
  • the holder of an exclusive trademark licence;
  • the user of a collective trademark, with the consent of the holder of the collective trademark; and
  • the user of a guarantee or certification trademark, with the consent of the holder of the guarantee or certification trademark.

Every citizen (ie, a physical or legal person) has the right and obligation to report the commission of a crime if they become aware of it.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Customs can act ex officio (which occurs infrequently) or based on valid customs-watch procedures.

In the case of an ex officio action, the customs authorities will temporarily impound the goods and notify the trademark owner of the impounding, the suspicion that its rights are infringed and the possibility of filing an application for customs watch within five working days of the date of impounding. If the trademark owner files an application for customs watch, the goods remain detained by customs until a decision is issued in relation to the customs-watch application. If the customs watch is granted, the goods will be detained for another 10 working days and the subsequent procedure follows the same steps as if the customs watch had been in place at the time of the impounding of goods.

If the customs watch was already in place, the customs authorities will notify the representative of the trademark owner of the seized goods and request confirmation of the suspicion that the goods are infringing. Once this is confirmed, the customs authorities will request that the importer declare whether the goods are counterfeit or not, within 10 working days. If the importer agrees that the goods are counterfeit or if it fails to respond within the prescribed deadline, the goods can be seized by customs and destroyed at the request of the rights holder, and at its expense. When the importer declares that the goods are not counterfeit, the customs authorities will notify the trademark owner of this declaration. The trademark owner then has 10 working days (extendable by another 10 working days upon a reasoned request) to bring a court action for infringement and inform customs of this action.

Activities that take place outside the country of registration cannot support a charge of infringement or dilution.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

There is no pretrial discovery foreseen by Bosnia Herzegovinian law. The parties are obliged to prove the facts on which they base their claim during trial. The claimant will present proposed evidence with the lawsuit, which the court then sends to the defendant for a response, which initiates civil proceedings.

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

The court has 30 days to decide whether to grant a request for a provisional measure, counting from the day when the alleged infringer files its response or the deadline by which the alleged infringer was due to file its response. The procedure concerning the ordering of a provisional measure has to be expeditious.

As regards the typical time frame for trial level, the cases can take anywhere from 12 months to two to three years or even longer at the appeal level.

Limitation period

What is the limitation period for filing an infringement action?

An action for the infringement of a trademark, or for the infringement of rights conferred by an application, may be brought within a period of three years from the day on which the plaintiff learned of the infringement and the infringer, and no later than five years from the day on which the infringement was committed for the first time.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

The typical range of costs is €5,000 to €15,000, depending on the value of the dispute.

Appeals

What avenues of appeal are available?

Decisions from a first-instance court may be appealed to higher appellate courts within 30 days of receipt of the decision.

Trademark infringement matters are heard at first instance by the commercial divisions of the municipal courts in the Federation of Bosnia and Herzegovina and by the commercial courts in the Republic of Serbia. At second instance, the competent courts are the cantonal courts in the Federation of Bosnia and Herzegovina and the Higher Commercial Court in the Republic of Serbia.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Alleged infringers can defend themselves in infringement proceedings by claiming that:

  • they are using their own trade name, acquired conscientiously before the priority date of the plaintiff’s trademark;
  • the plaintiff’s trademark rights are exhausted;
  • they are using their own name or address in the course of trade in accordance with good business practices;
  • they are using the sign as an indication of the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services, or, where the sign is a registered trademark, as a necessity to indicate the intended purpose of the goods or services, in particular where spare parts or accessories are concerned;
  • they are using their own registered mark;
  • there has been continued use or prior use of the mark in good faith and without opposition from the title holder - in other words, the statute of limitations has expired;
  • the marks are dissimilar and there is no likelihood of confusion; or
  • the goods or services in relation to which they are using the mark are dissimilar to those covered by the plaintiff’s trademark, unless the plaintiff’s trademark is well known.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

In a civil action, the trademark owner can claim:

  • the prohibition of the continuation of the infringement as committed and of future similar infringements by means of the cessation or omission of acts that are infringing;
  • the termination of the situation caused by the infringement;
  • the recall of all infringing objects from the market, respecting the interests of third parties acting in good faith;
  • the complete removal of infringing objects from the market;
  • the destruction of infringing objects;
  • the establishment of the infringement;
  • the destruction of means that were exclusively or predominantly intended or used for infringing acts, and that are owned by the infringer;
  • the surrender of infringing objects to the rights holder, along with reimbursement of production costs;
  • compensation for property (material) damage and reimbursement of reasonable expenses of the proceedings; and
  • the publication of the court’s judgment at the expense of the defendant.

The Law on Trademarks also provides for a possibility to claim indemnification against the infringer up to three times the amount of the appropriate usual licence remuneration that would be obtained for the use of a trademark, provided that the infringement was committed intentionally or by gross negligence.

The court may order the infringer to provide information on the source and distribution channels of the infringing goods

While the Law on Trademarks does not speak of criminal liability in cases of infringement, the Criminal Codes of Bosnia and Herzegovina, of the Federation of Bosnia and Herzegovina and of the Republic of Serbia provide for:

  • criminal acts of 'forgery of trademarks, measures and weights' punishable by prison sentence from six months to five years (article 208 of the Criminal Code of Bosnia and Herzegovina);
  • 'counterfeiting of trademarks, measures and weights', punishable by prison sentence from six months to five years (article 259 of the Criminal Code of the Federation of Bosnia and Herzegovina); and
  • 'unauthorised use of another’s trade name, design or model', punishable by a fine or a prison sentence up to three years (article 272 of the Criminal Code of the Republic of Serbia).

These all relate to trademark infringement or counterfeiting. In other words, under the criminal codes, the unauthorised use of registered trademarks in particular amounts to criminal acts of 'deceiving buyers'.

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR techniques are not commonly used in trademark matters in Bosnia and Herzegovina. However, in the Foreign Trade Chamber of Bosnia and Herzegovina, as an institution whose main role is to represent and protect the interests of companies, the arbitration court has juris­diction for arbitration to settle disputes in commercial and other property and legal matters. Compared to regular court proceedings, proceedings before the arbitration court are cheaper, faster, more direct, less formal, and as such, recommended. The arbitration court is an independent body, in its work and decisions. Arbitration is used for settlement of disputes that meet the following requirements:

  • that it is a commercial dispute in which the parties are free to dispose of the dispute matter where arbitration may at the request of one or both parties intervene for the sake of conciliation;
  • that this type of dispute is not under the exclusive jurisdiction of the ordinary court; and
  • that the parties have agreed on the jurisdiction of the arbitration court.

The decisions are enforceable unless an action for annulment of the arbitral award is brought before the competent court within 30 days of the award.