Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks is the Law on Trademarks as published in the Official Gazette on 28 May 2010.

International law

Which international trademark agreements has your jurisdiction signed?

Bosnia and Herzegovina is a signatory to:

  • the Madrid Agreement concerning the International Registration of Marks;
  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
  • the Trademark Law Treaty;
  • the Paris Convention for the Protection of Industrial Property;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Regulators

Which government bodies regulate trademark law?

The governing bodies for trademark law are primarily:

  • the Institute for Intellectual Property of Bosnia and Herzegovina;
  • the Parliamentary Assembly of Bosnia and Herzegovina; and
  • the Council of Ministers of Bosnia and Herzegovina.

Registration and use

Ownership 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.
Registration time frame and cost

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.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

The holder of a trademark or the applicant may assign the right of use of a trademark or the rights conferred by the application in respect of some or all of the goods or services by a licensing contract.

The recording of the licence is not mandatory but is recommended since the licence gains effect towards third parties only by registration. Also, it is easier to prove the proper use of a trademark if used by a licensee when the licence is recorded.

For the purposes of registration in the trademark register, the licence agreement must contain:

  • indications of the contracting parties;
  • the number of trademark or the number of the application, the term of licence, the goods or services for which the licence is granted; and
  • the indication as to whether the licence is exclusive or non-exclusive, in absence of which, it is deemed to be non-exclusive.
Assignment

What can be assigned?

A trademark application or registration may be assigned in relation to all or some of the relevant goods or services. The request may be filed by either party to the agreement. The request must be accompanied by the assignment deed or agreement or confirmatory declaration (original or certified copy), signed by both parties, as well as a sworn translation thereof into the local language. There is no provision in the local law governing the transfer of goodwill or business assets in relation to trademark assignments.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

Documents required for recording of the assignment of rights are:

  • a power of attorney signed by the assignee;
  • the assignment document signed by the assignor and assignee (the original document or a certified copy is required, together with the certified translation into Bosnian); and
  • evidence of payment of proscribed fees.

Following the formalities' examination, a decision on recording of the assignment is issued and the assignment is registered in the Register of Trademarks.

Validity of assignment

Must the assignment be recorded for purposes of its validity?

A trademark assignment must be recorded to have legal effect.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

The pledge contract must made in writing and it must contain:

  • the date of the execution thereof;
  • the name and surname or the trade name;
  • the domicile or residence or the principal place of business of the contracting parties, as well as of the debtors if different persons are concerned;
  • the registration number of a trademark or the number of the application for the grant of a trademark; and
  • the data on the debit claims to be secured by the pledge.

A lien creditor shall acquire a pledge by the entry thereof in the respective register. The pledge is entered in the trademark register at the request of the trademark owner or the applicant or the lien creditor, subject to fulfilling formal requirements and the payment of prescribed fees.

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.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

There have been no important developments in trademark law or practice in the past year.