Intellectual Property Rights Protection in Bosnia and Herzegovina

Trademark Protection Procedure

The procedure is initiated by filing an application for the grant of a trademark with The Institute for Intellectual Property of Bosnia and Herzegovina. It is necessary to submit a completed request for the grant of a trademark, accompanying documents, and proof that the costs have been paid.

After receiving the application, the Institute will examine it to ensure that it complies with the requirements of the Trademark Law. One of the grounds for absolute refusal is that the sign cannot be protected as a trade mark if it is identical to an earlier trade mark application/registration for the same goods or services.

Once the application passes the examination, the Institute will publish the application in the Official Bulletin. This is to give third parties the opportunity to oppose the registration of the trademark.
The opposition period lasts for 3 months from the date of publication.
If no opposition is filed, or if any opposition is resolved in favor of the applicant, the Institute will proceed with the registration of the trademark. The applicant will then receive a certificate of registration.
The entire process, from application to registration, usually takes between 10 to 12 months, provided that there are no objections or oppositions.

Registered trademarks in Bosnia and Herzegovina have a validity of ten years from the application date and can be renewed indefinitely for further periods of ten years. There is a grace period of six months after the expiration date during which the trademark renewal may still be requested upon payment of a late renewal fee.

Bosnia and Herzegovina is also a also a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible.

Civil Protection

In the case of infringement of a trademark or the rights conferred by a trademark application, where the trademark is granted, the plaintiff may claim in an action:
a) establishment of the infringement of rights;
b) prohibition of the continuation of infringement as committed, and of future similar infringements by means of cessation or omission of acts which are infringing such right;
c) termination of situation caused by infringement;
d) recall of infringing objects from the channels of commerce, respecting the interests of third parties acting in good faith;
e) complete removal of infringing objects from channels of commerce;
f) destruction of infringing objects;
g) destruction of means which are exclusively or predominantly intended or used for infringing acts, and which are owned by the infringer;
h) surrender of infringing objects to the right holder, along with reimbursement of production costs; i) compensation for property damage and reimbursement of reasonable expenses of the proceedings;
j) publication of court’s judgment at the expense of the defendant.

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 not later than within five years from the day on which the infringement was committed for the first time.

Geographical Indications

An indication of geographical origin is any indication by which a country or a place situated therein is directly or indirectly indicated as the country or the place of geographical origin of a product. An indication of geographical origin is used to designate natural, agricultural, industrial, artisan and handicraft products.
The protection of an indication of geographical origin increases the market value of a product arising from its specific characteristics and established reputation. The protection prevents misuse or an unauthorized use of a geographical indication by other persons.

Some known local geographical indications are
Herzegovina honey, Sarajevo filigree, Kreševo horseshoe egg…

Patents

The procedure is initiated by filing an application for the grant of a patent with the Institute. It is necessary to furnish a completed request for the grant of a patent, accompanying documents and proof of payment of the costs involved.
The grant procedure consist of:
1. Filing an application with the Institute,
2. Formal examination of the application in the Institute,
3. Publication of the patent application in the Official Gazette of the Institute,
4. Request by the applicant to the Institute concerning a type of examination of the patent application. Within six months from the publication date of the patent application in the Official Gazette, the applicant files a request for:
– the grant of a patent on the basis of a substantive examination of the patent application in the Institute, or
– the grant of a patent on the basis of the submitted results of a substantive examination of the patent application carried out by some other authority, as accepted, or
– deferred examination of the patent application and the grant of a consensual patent,
5. Examination of the patent application in the Institute,
6. Issuing of a decision to grant a patent by the Institute,
7. Publication of the patent in the Official Gazette.

Patents last 20 years, and consesual patents last 10 years from the filing date of the application.
A patent and a consensual patent differ in:
– term of protection – a patent lasts 20 years, and a consensual patent lasts 10 years from the filing date of the application;
– patent application prosecution – prosecution of a consensual patent application does not require a substantive examination of patent grant conditions.
Not carrying out a substantive examination simplifies the grant procedure and reduces the costs involved. But, any legal entity may file with the Institute, within six months from the publication of a patent application, an opposition against the grant of a consensual patent, following which the applicant must file a request for a substantive examination of a patent.

Effect of European Patents

Bosnia and Herzegovina is not a member of the European Patent Organization (EPO), but it signed a Cooperation and Extension Agreement with the EPO on December 1, 2004, which allows extension of European patent applications and patents to Bosnia and Herzegovina.
Extended European patent applications and patents will enjoy essentially the same protection in Bosnia and Herzegovina as the patents granted by the EPO.
The timeframe to request the extension is 3 months after the date on which the mention of grant is published in the European Patent Bulletin, the applicant must file the patent claims into either Bosnian, Croatian or Serbian.

Copyright

The principle according to which copyright is acquired without formalities is applicable in most countries worldwide, including BIH.
In order to preserve evidence of his or her creativity or for other various reasons, an author may deposit his or her originals or copies of their works of authorship or items of their related rights within the Institute for Intellectual Property of Bosnia and Herzegovina. A deposited work is entered into the book of records of authorship works maintained by the Institute.
Depositing is not an obligation of the author, nor does it constitute a requirement for acquisition of copyright protection, but it is only a possibility.
Copyright is an exclusive right and it lasts for the entire lifetime of the author plus a period of 70 years after his or her death. When it comes to the collective works, the term of 70 years starts running from the day of legal publication of the work. If it involves a work of an anonymous author, the said term is calculated in the same way. If the subject matter of copyright on a collective work or a computer program is a legal entity, copyright runs for 70 years from the disclosure of the work or the creation of the computer program.

Industrial Design

A procedure for the grant of an industrial design is initiated by filing an application for the grant of an industrial design.

Phases:

1. Filing an application with the Institute,

2. Formal examination of the application in the Institute,

3. Publication of the industrial design application in the Official Gazette of the Institute,

4. Issuing of the industrial design certificate together with a decision to grant the industrial design in the Institute,

5. Publication of the registered industrial design in the Official Gazette of the Institute

The term of Industrial design protection is five years from the filing date of the application, provided that it has been registered. The term of protection may be extended four times for the same time period, with the payment of the costs involved and timely filing of a request. An industrial design may last maximum 25 years.

Possibility of protection of new varieties of plants

Administration of Bosnia and Herzegovina for Plant Health Protection formed by Ministry of Foreign Trade and Economic Relations is the authority for protection of new varieties of plants.

Border Enforcement

Customs authorities shall, in cases of suspicion of intellectual property infringement, suspend customs procedure until the completion of the proceedings establishing the infringement. Where the customs authority detained or suspended the release of goods which are suspected of infringing an intellectual property right, the customs authority may start a simplified destruction procedure. This procedure implies destruction of goods before obtaining a court decision.
Otherwise, the right holder must prove in court procedure whether an intellectual property right has been infringed.
A right-holder may apply in writing to the Indirect Taxations Authority of Bosnia and Herzegovina for action when goods are suspected of infringing an intellectual property right.

Criminal Liability

Criminal protection of intellectual property rights in Bosnia and Herzegovina belongs to the system of general criminal law, i.e it belongs to the legislative approach that regulates the criminal protection of intellectual property rights in the general part of criminal law, ie in general criminal codes. Chapter XXI of the Criminal Code of Bosnia and Herzegovina contains criminal offenses of copyright infringement and copyright related rights.