Trademark registration procedure in Bosnia and Herzegovina

Trademark registration in Bosnia and Herzegovina shares lots of similarities like in every other corner of the world, as many compound elements are defined with the Nice Agreement and administered by the World Intellectual Property Organisation (WIPO).

Trademark registration of any kind is a desirable activity if you seek to reduce the extent of abuse of your brand and find yourself in a preferable position when unauthorized use of the same or infringement of intellectual property rights occurs.

Copying (plagiarism) starts from the fact that one wants to pick up someone else's hard work, and take advantage of the benefits that a well-established business does on the market.

Corporations and larger enterprises have a serious concern with this, but it is so widespread across every market layer because of Internet usage, that it does not bypass anyone. In a couple of chapters, we present the main determinants of why say „YES“ to trademark applications, as a procedure that can be a shield for you in such confrontations, with observation of proceedings in Bosnia and Herzegovina.

1. IMPORTANCE OF A TRADEMARK IN BUSINESS

A trademark is a right that protects certain signs used on goods or services.

In the modern market age, the company gains a public reputation and recognition through a trademark, and as such is a key factor in any serious oriented business. In addition, the trademark evokes a sense of reliability and match to the quality of the product or service in every single customer.

The aim any trademark registration is also to prevent copying activities, as well as unauthorized use in the trade of goods. Copying deceives customers and users of services, which ultimately leads to economic damage to the owner of such a business.

Furthermore, with the trademark you are identified as the holder of intellectual property, covering all protection aspects in the trade of goods and services, i.e. all trade activities.

Certainly, once a mark/sign is already registered by a trademark, the proceedings against the infringer are much easier and more successful.

2. WHAT CAN BE PROTECTED AS A MARK?

A trademark may take the form of a name, logo, visual identity, graphic design, slogan etc.

It can certainly be said that the trademark covers the entire business model of the company. Namely, in everyday shopping activities, the visual identity of a product awakens in consumers a sense of trust and confirms the decision that the product/service is worth paying the price offered.

3. TRADEMARK APPLICATION PROCEEDINGS

The Law on Trademarks regulates the issue of trademark registration in Bosnia and Herzegovina.

In order to cover a goods or service sign with a trademark, it is necessary to initiate a procedure in front of the competent institution. In Bosnia and Herzegovina, it is the Institute for Intellectual Property of Bosnia and Herzegovina based in Mostar, covering not only trademark applications for the territory of BiH, but international market as well, depending on your preferences.

Trademark protection is provided for a period of 10 years with the possibility of unlimited extension of protection. When initiating the trademark application procedure, it is important to check that there is no identical or similar trademark in a particular market, otherwise the application will be rejected. The trademark application must be drawn up in accordance with the International Classification of Goods and Services established by the Nice Agreement in 1957.

It is certainly better to take into account trademark protection before unwanted activities and consequences occur. Properly taken and well-timed trademark protection provides the owner with the security of the unhindered development of the brand growth.

4. WHAT HAPPENS WHEN RIGHTS OVER INTELLECTUAL PROPERTY HAVE BEEN VIOLATED…

When there has already been an infringement of intellectual property through trademark infringement, then a broader picture of the situation itself should be taken.

Experts and their expertise play an exceptional role in copyright infringement of various kinds. The reason is simple - findings before the courts are more relevant when taken from the profession side as given weight toward court decision can prevail in the right direction.

Infringements of the trademark and complete brand’s visual identity is provable in nature even on occasions, small details, not determined at the first sight.

We stand to go beyond trademark infringement, because as the final product we are getting infringement of the entire business operations, as the single copied graphic solutions lead to misleading of the end customers and complete supply chain.

OUR OBSERVATION:

"Thus, using your subject entity tradition and market presence, with minimal effort, the opposite party is able to maximize profits and mislead customers in a way that standard and potential customers do not distinguish particular brands, and identify the quality of consumed copied products with yours, which has long-term negative implications."

EXAMPLE: Similarity in packaging can lead the customer to unconscious connection and put different products within the same identity framework, so the user in case of dissatisfaction with one of the products (and not knowing that it is completely opposite to consumed products) may leave previously acquired perception behind of real consumed product.

However, trademark infringement is much broader than just copying a graphic identity, visuals and the like. Namely, trademark infringement also includes unauthorized trade in goods in the internal and external territory of Bosnia and Herzegovina, where in such situations a significant role for monitoring and sanctioning infringements of intellectual property rights is performed by the Customs Sector of the Indirect Taxation Authority of Bosnia and Herzegovina.

5. WHAT POSSIBLE ACTIONS COULD BE TAKEN WHEN TRADEMARK IS INFRINGED IN BOSNIA AND HERZEGOVINA?

Unauthorized use and trademarks plagiarism are offenses that large enterprises deal with almost on a daily level. However, such harmful effects do not avoid those who operate just locally.

In each of the above cases of trademark infringement, the holder (owner) of the trademark has the right to judicial protection.

The trademark lawsuit in Bosnia and Herzegovina may require the termination of the violation, compensation for damage, destruction of items etc. During the court proceedings, it is possible to submit a request to inspection and customs authorities of the BiH in order to effectively prevent harmful effects.

Judicial proceedings in case of trademark infringement in Bosnia and Herzegovina are conducted according to the principle of urgency. This means that each acting court is obliged to determine in an urgent procedure whether a violation has occurred and how much is the amount of damage caused according to the trademark ownership rights. This fact once again confirms the advantage of a registered mark over the ones whose owners have not completed the registration process.

6. Ralph Lauren vs U.S.P.A. Polo: COMPLEXITY OF CORPORATION’S TRADEMARK PROTECTION

We would say - a textbook example of obvious theft, but also an all-time display of the complexity of copyright/trademark litigation in the corporate practice area.

If you've ever wondered if these 2 brands have any connection, you're certainly not the only one with the thoughts.

This case is at the same time a legal tapeworm and science fiction of a global scale in the world of copyright because it is not about lawsuits in one single matter, but through decades of litigation, the lawsuits are aimed at different uses of signs in different assortments, in different jurisdictions across all continents.

And here's why.

Ralph Lauren, as a world-renowned manufacturer of clothing and fashion accessories, from the very beginning, developed its marketing story with a link to the sport "Polo", and the entire concept was based on that same link, without deviations in the campaigns.

Over time, different "players" came into the game, who wanted to market the same sports activity on the exact same concept with visually matching graphic elements, and that's what leads in the front of the U.S.P.A. Polo brand.

In 1984, the legal game starts with the lawsuit from Ralph Lauren, since the U.S.P.A. Polo practically only "doubled" the visual identity - 2 horsemen against the one at Ralph Lauren.

U.S.P.A. Polo even tried to dispel the accusations and avoid legal consequences in a perfidious way - they are essentially an association of polo players, and through clothing and other fashion accessories they support the work of the association.

Regardless of the 2 horses and 2 players in the sign, the "copy" impression is clear and feasible to everyone. The following is a great explanation from the judgment, which you can use if you are creating your brand and want to take "only" some elements of the competitor logo/sign:

"The test of visual similarity is not a test of substantial reproduction. Instead, the visual similarity is assessed according to the overall impressions created by the mark or signs, bearing in mind their distinctive and dominant components."

> Briefly, some of the results of the lawsuits:

It was clearly established that USPA copied Ralph Lauren, and for that, in 2006, in order to establish the difference beyond doubt, they had to adjust the logo and explicitly add the text part below the sign, implicating, that their logo in all variants must be explicitly completed with the text U.S.P.A. Polo.

As for an interesting lawsuit from 2016, which involved the placing of glasses in the traffic market of Singapore, the court dismissed Ralph Lauren's lawsuit with the explanation that buying glasses is not an impulse purchase, that customer's deciding point is higher as they tend to collect more information before final decisions. Therefore, there's a low probability that the brand's trademark/logo will mislead them during the choosing process.

BOTTOM LINE: In the case of copyright, a very important compound is court practice and past experiences of judging the same matter because they are adopted as norms. Pay attention closely if you tend to copy someone, what are the ultimate limits, and what is the use of the whole concept when we talk about your future trademark.

7. INVOLVEMENT OF LAWYERS IN THE PROCEDURE OF REGISTRATION OF TRADEMARKS IN BOSNIA AND HERZEGOVINA

Given the complexity of trademark registration, and especially when trademark infringement occurs, practice shows that the interests of clients in this specific legal area are best protected by specialized trademark attorneys.

According to the decision of the Institute for Intellectual Property of Bosnia and Herzegovina, our office is one of about 20 specialized offices in BiH that provide professional assistance in this area.

LJUBIC LAW FIRM helps in the following actions:

▶ Trademark registration in BiH and the Republic of Croatia (initiating and conducting a complete trademark proceedings)

▶ Trademark registration at the international level

▶ Analysis of applied and registered trademarks

▶ Control of committed infringement and unauthorized use of the trademark

▶ Representation before the court and administrative proceedings

▶ Taking all other actions in order to protect the business interests of the trademark owner.

SUMMARY

• Don't be one of those who will consider trademark application when copying or trademark infringement occurs
• Prevent unpleasant and unwanted situations and start the protection process in accordance with the development of the business/product
• If you have ever considered legal protection with trademark application, you are already on the right path to consolidate your business against plagiarism and ensure sort of a more peaceful future