Trade and Service Marks

– Law on Trademarks (Official Gazette “Sl. glasnik BiH” No. 53, June 29, 2010), in force since January 1, 2011.

Membership in International Conventions

– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since March 1, 1992.
– Convention Establishing the World Intellectual Property Organization (WIPO), since March 1, 1992.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since March 1, 1992.
– Madrid Agreement Concerning the International Registration of Marks, since June 2, 1993.
– Trademark Law Treaty, since December 22, 2006.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, accession on October 27, 2008, and in force since January 27, 2009.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, as of April 19, 2012.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Stockholm Act, since June 22, 2013.

Filing

Applicant: any legal entity or natural person.

Foreigners: must appoint a local patent attorney.

Protection of foreigners: they enjoy the same rights as nationals of Bosnia and Herzegovina in accordance with international contracts, conventions or on the basis of reciprocity.

Kinds of protection: (1) trade and service marks, collective marks; certification marks; (2) words (including individual private names), graphical images, letters, numbers, pictures, form of products or their packaging, combination of colors, three-dimensional forms, all subject to being distinctive, as well as combination of all aforesaid.

Exceptions to protection – absolute grounds for exclusion: a mark which (1) conflicts with the law or morality; (2) cannot be presented graphically; (3) is identical with an earlier trade/service mark registration or application designating identical goods or services; (4) is not suitable for distinguishing goods or services; (5) consists solely of marks or data used in course of trade to denote the type or the purpose of the goods or services, of the time or method of production, of the quality, price, quantity, weight, name of place or geographical origin, or of some other characteristics of goods and services; (6) consists solely of signs or data which are in a customary use among people, professionals or in good faith and within the trade, for denoting the specific type of goods or services; (7) is in the shape determined primarily by the type of goods, or in the shape of a product required for achieving a particular technical aim, or in the shape that provides a significant meaning to the product; (8) is causing confusion on the market and, in particular, is misleading the average consumer with regard to the geographical origin, type, quality or other properties of the goods or services; (9) contains official signs for controlling or guaranteeing the quality of goods, or imitations thereof; (10) contains an official state coat of arms, flag or emblem, name or abbreviated name of a country or international organization or an imitation thereof, except with the consent of the competent authority of such country or organization; (11) contains a name or abbreviated name, coat of arms, emblem, flag or other official symbol of Bosnia and Herzegovina or it entities, cantons, districts, or imitations thereof, except with the consent of the competent authority; (12) represents or resembles national or religious symbols; (13) is a sign for vine or alcohol spirits or contains a geographical indication for denoting vine or spirits in case they do not have that geographical origin; (14) is solely the name of the appellation of origin with international registration designating Bosnia and Herzegovina.

Exceptions to protection – relative grounds for exclusion: a mark which (1) is identical or similar to an already registered mark designating the same or similar type of goods or services, so that similarity cause confusion on the market, including the possibility of misleading the average consumer; (2) which, in regard to its image or contents, violates copyright and industrial property rights; (3) is identical or similar to a well-known mark in accordance to Article 6bis of the Paris Convention, designating identical or similar goods or services; (4) is a reproduction, imitation or transliteration of the whole or a part of a famous registered mark in accordance to Article 16.3 of the TRIPS, regardless of the type of goods or services; (5) which use could violate the right on the private name of a prominent person or image of any person except with the consent of such prominent person (or of his/her relatives, if deceased); the image or name of a deceased historical or other deceased prominent person, except with the consent of the competent authority; (6) is identical or similar to an earlier registered mark designating identical or similar goods/services, less than two years from its expiration due to non-payment of renewal fees; (7) is filed contrary to principles of good faith.

Classification of goods and services: international, one application may cover several classes.

Priority: single, multiple or partial priority may be claimed; Union priority (according to the Paris Convention) – six months; exhibition priority – three months after the closing date; priority must be claimed in the application.

Territory covered: Bosnia and Herzegovina.

Filing requirements for an application (to be sent to resident agent):
1. Power of attorney (no legalization);
2. The mark and the list of goods and/or services, classified in accordance with the International Classification;
3. If the mark is not a word mark in standard characters, then 2 black and white prints (max. 8 x 8 cm); if the mark is in color, then 2 color and 2 black and white prints (max. 8 x 8 cm);
4. For collective marks, a general instrument governing the grant of the right to use the collective mark;
5. For certification marks, a general instrument governing the quality of the goods/services and supervision of the use of the mark;
6. Priority document (if any), to be filed within three months from the filing date, a translation is required; no legalization.

Minimum requirements to obtain a filing date: name and address of the applicant; the mark and the list of goods.

Terms for filing missing documents: priority document and translation: three months from the filing date; other missing documents: upon request by the Intellectual Property Office, which sets the deadline of between thirty to sixty days; one extension of between fifteen and sixty days is possible.

Electronic filing: not available. 

Electronic signatures: are not accepted (only wet signatures).

Examination

Examination: formal examination, examination of absolute exceptions to protection. If an application does not meet these examination requirements, the applicant is informed and a deadline of between thirty to sixty days is set for the applicant to file a reply; one extension of between fifteen and sixty days is possible. 

Disclaimers: available.  

Letters of consent: are accepted.

Publication: an application which complies fully with the above examination requirements is published. International registrations designating Bosnia and Herzegovina are not published; their publication in “Marques Internationales” is considered publication in Bosnia and Herzegovina.

Opposition to the published application: to be filed within three months from publication.

Amendments of application: the mark itself cannot be modified significantly; the list of goods and/or services can be restricted, but not broadened.

Division of application: the applicant can request that the application is divided into two or more applications; the list of goods and services of the original application is hence divided, and the new resulting applications inherit the priority and filing date of the original application.

Secrecy: details of pending applications are disclosed on request.

Urgent examination procedure: only if a lawsuit, a request for customs or trade inspectorate surveillance have been filed.

Restoration: possible by reinstatement to the former status; the request for the reinstating has to be filed within three months from receipt of the decision on the status which is to be restored.

Registration, Protection

Registration: for an application that fulfills all requirements for registration, the Intellectual Property Office registers the mark, issues the corresponding registration decision, and the certificate of registration and publishes the mark in the Official Gazette.

Appeals: no complaint can be lodged against the registration decision, but it may be appealed to the Complaints Authority of the Institute within fifteen days from the receipt of the decision. Furthermore, a decision of the Complaints Authority can also be appealed within thirty days of receipt by filing an administrative suit with the Court of Bosnia and Herzegovina.

Duration: ten years from the filing date.

Extension of duration: by renewal, for further periods of ten years.

Renewal: any time in the tenth year of duration, but not later than expiry of the ten-year period for which fees have been paid. Grace period: six months, with 50% fine.

Use: a registered mark must be used; use of a registered mark in a slightly modified form is considered legitimate use; grace period for non-use is five years after the registration date or the last date of use; non-use may lead to cancellation of the mark (see below).

Assignments: applications and/or granted marks could be assigned; corresponding assignment deeds must be registered with the Intellectual Property Office.

Licenses: exclusive or non-exclusive licenses in written form must be registered with the Intellectual Property Office.

Marking: not compulsory.

Modification of Protection after Registration

Modification: the list of goods/services may be limited only.

Division of registration: the trademark owner can request that his registered mark is divided into two or more registrations; the list of goods of the original registration is hence divided, and the new resulting registrations inherit all relevant data from the original registration.

Rights of prior user: a prior user may request the relevant court to declare him the owner of the mark, proving generally known prior use of the mark on the market; this request is not granted if the owner of the mark proves that he has used the mark as long or longer than this prior user; the right of a prior user lapses five years after the registration of the mark.

Nullification action: during the whole duration of a mark, the Intellectual Property Office can cancel (ex officio) the mark if it became a generic mark at any time after registration; during the whole duration of a mark, any interested party can lodge a complaint with the Intellectual Property Office for nullification of the mark on the grounds that provisions for granting the mark have not been fulfilled; the owner of a prior registration can lodge a complaint against one (identical or similar) later registered mark, but only if, in the period of five years before lodging the claim, he did object to the use of the later mark, which was applied for in good faith.

Cancellation due to non-use: any interested party can request the Intellectual Property Office to cancel the mark due to non-use for unjustified reasons after the grace period of five years.

Validation of lapsed mark: possible; a request for validation must be filed not later than two years after the trademark expiration date.

Infringement and penalties: the applicant/owner/licensee can initiate civil and penal proceedings against any infringer at the relevant court; the proceedings must be initiated within three years after the owner learned about the infringement and the infringer, but not later than five years from the date of the actual infringement; the court can prohibit the infringement, grant indemnification, and order the infringer to bear the costs of publishing the court verdict; the infringer can be imprisoned and fined.