Bosnian PTO Practice in Light of New EU Trademark Regulation

May 5 2016 - 18:48

Prior to June 2012, the Institute for Intellectual Property of Bosnia and Herzegovina applied the “class heading covers all” approach when interpreting the scope of protection when class headings are used in lists of goods and services in trademark applications and registrations.

The Court of Justice of the European Union’s June 19, 2012 decision in the IP Translator ‘class headings’ case did not seem to have much effect on the practice of the Bosnian PTO, despite the fact that the PTO closely follows the EUIPO practice and that it has quite often used EUIPO Guidelines in its work.

The trademark law and related regulations did not include any details on the goods and services, other than formal requirements, such as properly classifying the goods, distinguishing classes and submitting a specification as a separate document.

However, sometime in 2013, local agents were unofficially notified that the PTO would slowly start shifting from the “class heading covers all” to the “means what it says” approach. The broad and incomplete regulations governing the specification of goods and services allowed the PTO to adopt the new approach, but the lack of formal regulations as well as the fact that the Bosnian PTO operates at three locations – Mostar, Sarajevo and Banja Luka, resulted in the inconsistency of procedures.

The opportunity to make the practice uniform first came about as a result of an EU-funded project that led to the creation of the first official methodology for trademark examination, which entered into force in January 2015. The methodology includes guidelines on all aspects of trademark examination, including a chapter dedicated to the specification of goods and services, which explicitly states that the “means what it says” approach will apply to applications filed on or after January 1, 2015.

Recent changes introduced by the EU Regulation 2015/2424, especially those related to implementing the IP Translator decision, will again leave the Bosnian PTO one step behind the EUIPO, as the PTO lacks personnel and funding necessary to carry out this task. It is not sufficient to simply amend the methodology, but to amend additional legislation, as this time they would not be simply changing the rules of the game to guide future cases, but the changes would have implications for the rights that were granted earlier.

Due to the complex political and administrative structure of the country, such changes in legislation are not likely to happen in the foreseeable future. It would be slightly easier to implement the changes through subordinate legislation. As mentioned earlier, specification of goods is not regulated by any law, and thus, does not necessarily trigger legislation amendments or new legislative efforts. Moreover, changing legislation would not solve the problem of a lack of skilled staff and funding needed to implement the changes.

Through informal communication, we learned that the PTO is aware that the recent changes will resonate on a global level, but that it is unlikely that the sunset period and declarations will be introduced any time soon in Bosnia.

Changes related to removing the requirement of graphical representation will be even more difficult to implement, as the current trademark law (Article 4) prescribes that in order to be eligible for trademark protection, a mark must be graphically representable. In order to implement this change, the law would need to be amended and subordinate legislation, as an alternative option, is not possible in this case.

In light of the above, it is quite obvious that the EU trademark reform will have little or no impact on Bosnia and Herzegovina. The reason for this is not the lack of will, but the lack of efficient political mechanisms and of means to keep pace with the changes.

By: Tarik Prolaz

For more information, please contact Tarik Prolaz at our Bosnia office.

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