FAQ on Trademark

WHAT IS A TRADEMARK?

A trademark is the right protecting a sign capable of distinguishing the products or services of one undertaking from the same or similar products/services of other undertakings. The nature of the products/services to which a trademark is to be applied shall not constitute an obstacle to registration of the trademark.

A sign that is capable of distinguishing identical or similar products/services, and that may be represented graphically may be protected by a trademark. A sign may consist of: words, including personal names, drawings, letters, numerals, images, the shape of a product or its packaging, colours, tri-dimensional forms or the combination of such elements.

A trademark as an identity sign has four main functions: distinguishing products/services, their source, quality, and market promotion. A trademark is granted by a responsible authority of a state with the payment of fees, and it lasts for a certain period of time in a certain territory.

WHY DOES A TRADEMARK NEED PROTECTION?

A trademark provides its owner the exclusive right to mark a product/service and to use such trademark in commerce for a specific product/service. A trademark registered or applied for is the property, and it confers upon its holder the exclusive rights.

The trademark protection is an effective market instrument by which a manufacturer/service provider protects resources invested in the promotion of its product/service. The trademark protection enables the right holder to prevent an unauthorized use and exploitation of its trademark. A trademark or a brand name, which is the term frequently used nowadays, is one of the most significant instruments of an undertaking that serves as a manufacturer or a service provider indicator.

WHAT IS NOT REGARDED AS A TRADEMARK?

A seal, a stamp, official signs for marking precious metals, measures, and the like shall not be regarded as trademarks.

WHAT CANNOT BE PROTECTED BY A TRADEMARK, i.e. GROUNDS FOR REFUSAL OF TRADEMARK APPLICATION?

Absolute grounds for the refusal of a trademark application

The trademark shall not protect a sign which:

- is contrary to public order and morality,

- cannot be represented graphically,

- is identical to a sign applied for earlier for identical products/services,

- is not capable of distinguishing products/services,

- is likely to deceive the public by its appearance or content,

- contains an official quality control or warranty signs,

- contains national or another public coat of arms, flag or emblem, the name or the abbreviated name of a country or an international organization, unless authorized by the responsible authority of the country or the organization concerned,

- represents or imitates some national or religious symbol.

Relative grounds for the refusal of a trademark application

The trademark shall not protect a sign which:

- is identical with an earlier trademark of another person registered for similar

products/services or similar to an earlier registered trademark of another

person for identical or similar kind of products/services if, due to such identity

or similarity, it is likely to cause confusion in commerce, which includes the likelihood of its association with an earlier registered trademark,

- is identical or similar, for identical or similar kind of products/service, with

another person's trademark known in BIH within the meaning of Article 6.bis of

the Paris Convention for the Protection of Industrial Property (hereinafter: a

well-known trademark),

- is a reproduction, imitation or transliteration of another person's registered

trademark,

- by its appearance or content infringes an earlier copyright, geographical

indication or an earlier registered industrial design,

- whose use would infringe the right to the personal name of a famous person,

- which is identical or similar with an earlier trademark which was registered for

identical or similar product/service, and which expired due to the failure to

renew the registration, if less than two years have elapsed from the date of

expiry of the earlier trademark, unless the holder of the earlier trademark gave

consent to the registration of the later trademark or failed to use his

trademark.

- Is applied for contrary to the principle of good faith, conscientiousness, and

honesty.

The portrait, personal name, nickname or pseudonym of a famous person may be protected by a trademark only by consent of that person.

WHAT INSTITUTION IS RESPONSIBLE?

The procedure for the acquisition, maintenance, record keeping of the transfer, and termination of a trademark is conducted before the Institute for Intellectual Property of Bosnia and Herzegovina (the Institute). The Institute maintains Register of Trademark Applications, Register of Trademarks, and Register of Representatives for the Protection of Trademarks.

WHAT TYPES OF TRADEMARKS CAN BE APPLIED FOR WITH THE INSTITUTE?

Individual trademark is the trademark of one natural person or legal entity that is used to distinguish one or more kinds of products or services of that person or entity from identical or similar kinds of products or services of other participants in commerce.

Collective trademark is the trademark of a legal entity that represents a certain form of association of manufacturers or service providers whose members are entitled to use it.

Guarantee trademark is the trademark used by several persons under the supervision of the trademark holder, and that serves as a guarantee of quality, geographical origin, the manner of manufacture or other common characteristics of a product or service of such persons.

WHAT ARE THE PHASES OF PROCEDURE FOR THE GRANT OF A TRADEMARK?

The holder of a registered trademark or the applicant for the grant of a trademark may be a national or foreign natural person or legal entity. Foreign natural persons and legal entities enjoy the same rights as are enjoyed by national natural persons and legal entities in respect of the trademark protection in BIH, provided that it arises from the international treaties or conventions acceded to or ratified by BIH or from the principle of reciprocity.

A procedure for the grant of a trademark is initiated by filing an application for the grant of a trademark. The steps include:

1. Filing an application with the Institute

2. Formal examination of the application in the Institute.

3. Publication of the trademark application in the Official Gazette of the Institute that is available in paper and electronic forms on the Institute website at www.ipr.gov.ba.

4. Issuing a trademark certificate along with the decision to register a trademark in the Institute.

5. Publication of the registered trademark in the Official Gazette of the Institute that is available in paper and electronic forms on the Institute website at www.ipr.gov.ba.

WHAT NEEDS TO BE DONE TO INITIATE PROCEDURE FOR THE GRANT OF A TRADEMARK?

The procedure is initiated by filing an application for the grant of a trademark with the Institute. It is necessary to submit a completed request for the grant of a trademark, accompanying documents, and proof that the costs have been paid. The application is filed in written form, directly or through the post, by telefax or at the official e-mail of the Institute, provided that within eight days of its receipt it is furnished to the Institute in writing.

An application for the grant of an INDIVIDUAL TRADEMARK contains:

- Request for the grant of only one trademark that relates to one or several kinds of products/services (Form Z-01). The request is available on the Institute website at www.ipr.gov.ba.

- Sign that the applicant wishes to protect by a trademark.

- List of products/services to which the sign relates, which must be made according to the International Classification of Goods and Services established under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

An application for the grant of a COLLECTIVE TRADEMARK, in addition to the above documents, also contains:

- A general act on the collective trademark that must contain

+ Information concerning the applicant/person authorized to represent him/her,

+ provisions on the appearance of a sign and on the goods/services to which the sign relates,

+ provisions on who is entitled to use a collective trademark and under what conditions,

+ provisions on the rights and obligations of the user of a collective trademark in case of the infringement thereof,

+ provisions on the measures and consequences in case of noncompliance with the provisions of the general act.

Application for the grant of a GUARANTEE TRADEMARK, in addition to the above documents, also contains:

- A general act on the guarantee trademark that must contain the provisions on:

+ Common characteristics of the goods/services guaranteed by a guarantee trademark,

+ Supervision of the use of a guarantee trademark by its holder.

Accordal of the filing date to an application requires that on that date, the

application filed with the Institute contains: an indication to the effect that the grant of a trademark is sought, applicant contact information, a sign that the applicant wishes to protect, and the list of goods/services to which the sign relates.

The form is completed on the computer or the typewriter. It is submitted in one of the official languages of BIH, in two copies. One copy is retained by the Institute, and the other copy with the trademark application number, incoming mail serial number, date stamped and stamped with the official seal is returned to the applicant as proof that the filing date has been accorded to the application.

A trademark application is accompanied by the following documents:

- Power of attorney if a trademark application is filed through a representative.

- For a collective trademark/guarantee trademark – General act on the collective/guarantee trademark.

For more information, please refer to the Regulations Concerning Procedure for the Grant of a Trademark (currently available in local language).

WHAT DOES IT COST TO PROTECT AND MAINTAIN A TRADEMARK?

All actions in the procedure for the acquisition, maintenance, record keeping of the transfer, and termination of a trademark, as well as providing information services are subject to the payment of administrative fees and costs of the procedure. For the amounts of fees and costs, please refer to the Institute website at www.ipr.gov.ba, section fees and costs.

Proof of payment is furnished on filing the application.

DO I NEED TO HIRE A REPRESENTATIVE?

Hiring a representative by a national natural person or legal entity is not prescribed by the Law, and it is up to the applicant to decide to hire a representative.

Register of Representatives for Trademark Protection is available in electronic form on the Institute website at www.ipr.gov.ba

HOW LONG DOES THE TRADEMARK PROTECTION LAST?

Trademark protection lasts 10 years of the filing date of the application. The term of protection may be renewed an unlimited number of times for 10-year periods, with payment of the costs involved and timely filing of a request.

DOES THE PROTECTION OBTAINED IN BIH EXTEND TO OTHER COUNTRIES?

The trademark granted under the provisions of the BIH Law is a territorially limited right which is only effective in the territory of BIH. The same trademark may be simultaneously protected in several countries, provided that it is internationally registered for each of the countries concerned.

HOW CAN I PROTECT A TRADEMARK IN OTHER COUNTRIES?

The trademark holder from BIH may file an application for the international trademark application, as well as a request for the recording of changes in the International Register in accordance with the Madrid Agreement and Madrid Protocol. In that case, the fees and costs of the procedure are paid to the Institute, and international fees are paid directly to the International Bureau of the World Intellectual Property Organization.

LEGISLATION

- Trademark Law, Official Gazette of BIH, volume 53/10.

- Regulations Concerning Procedure for the Registration of Trademarks, Official

Gazette of BIH, volume 105/10.

- Administrative Fees Law, Official Gazette of BIH, volumes 16/02, 19/02, 43/04.

- Decision on Specific Costs of Procedure for the Acquisition and Maintenance of Industrial Property Rights, Official Gazette of BIH, volume 109/10.

- Administrative Procedure Law, Official Gazette of BIH, volumes 29/02, 12/04, 88/07, 93/09.