2020: Trademark Opposition in Bosnia and Herzegovina
Trademark opposition is procedure regulated in the Law on Trademark of Bosnia and Herzegovina (“Official Gazette of Bosnia and Herzegovina”, No. 53/10) regulates the system of examination of the applications for the trademark recognition based on an opposition. In terms of the Law on Trademark, the opposition means the possibility of control and influence of third parties on the trademark registration, whereby a third party is an interested person obliged to prove its legal interest in the entire process of trademark registration. The opposition refers to relative grounds for refusal of a trademark application that are contained in Article 7 of the Law on Trademark. Also, after the publication of the trademark application, any interested person may submit an opinion explaining why the sign does not meet the requirements of Article 6 of the Law on Trademark. Accordingly, we conclude that that in addition to filing the opposition for relative grounds for refusal of a trademark application, an interested person may also submit an opinion for absolute grounds for refusal of a trademark application, but in this case, unlike the opposition, an interested person is not a party in the proceeding.
I Trademark opposition – The deadline
Upon the publication of the application, any interested person may, within 3 months from the publication thereof, submit to the Institute a written opposition containing an explanation as to why a sign contained in the published application does not fulfill the conditions laid down in Article 7 of the Law on Trademark (Relative Grounds for Refusal of a Trademark Application). The time limit for filing the opposition shall not be extended for any reason.
II What are the required documents for trademark opposition?
An Opposition of registered trademarks requires documents for the application, in particular, documents that contain:
- the name and surname or the company name of the opponent and his address or registered office;
- a detailed explanation of all the grounds and evidence on which the opponent basis its objection and by which he proves its status of the interested person;
- all the published data relating to the application against which an objection is filed, including the number of the application, the name, surname and address or the company name and registered office of the applicant, and a representation of a sign applied for with a list of goods and services;
- a dully filed power of attorney if the objection is filed through a representative.
A detailed explanation of all grounds and evidence will be contained in opposition which shall be filed in two copies.
III How is the Opposition Procedure until issuing a decision?
For the purposes of the internationally registered trademarks applied for Bosnia and Herzegovina under the Madrid Agreement and the Madrid Protocol, the Institute shall, through the International Bureau, send to the holder of an internationally registered trademark a notification of the provisional refusal, based on opposition, and shall invite him to appoint a domestic representative. The representative shall file to the Institute a power of attorney for representation within four months from the date of the notification of refusal. The Institute shall send a copy of the opposition to the representative, after filing the above-mentioned power of attorney. The time limit for the response to the opposition shall be 60 days from the day of receipt of the copy of the opposition by the representative. The time limit shall not be extended. In further procedure will be applied to the provisions of Article 37 of Law on Trademarks of Bosnia and Herzegovina, about the opposition procedure for national trademarks.
According to the Article 37, if the applicant fails to submit his observations on the opposition within the time limit, the Institute shall refuse by a decision a request for the grant of a trademark as filed, within the limits of the requests contained in the opposition.
If the applicant submits his observations on the opposition the Institute shall examine the justification of the allegations contained in the opposition, and may order oral proceedings. Following the opposition procedure as carried out, the Institute shall, based on the facts as established, issue a decision on the refusal of the opposition or a decision on the partial refusal of the opposition and on the partial grant of a trademark or the refusal of the request for the grant of a trademark.
IV What are the chances of the procedure?
Following the fact that two trademarks (one trademark previously registered and the other one as a subject of registration opposition) have almost the same classes of goods and services and name that could make confusion for customers, there is a chance that person as an opponent will succeed in the procedure. But there is one thing which is prescribed in our Law that applicant of the impugned trademark could use in its favor. If the applicant states that the opponent has not used the trademark on which the opposition is based, the opponent shall prove that during the period of five years before the publication of the application against which the opposition has been filed, he has used his trademark within the territory of Bosnia and Herzegovina for the goods or services in relation to which the opposition is filed or shall prove that there were justified reasons for non-use of the trademark for such goods or services, provided that the earlier trademark has, on the date of publication of the application against which the opposition is filed, been registered for not less than five years. So, if the applicant wants to file the opposition and if the trademark has not been registered in Bosnia and Herzegovina for at least five years, it could be stated in the opposition, with the clear evidence that it has been used since the registration period so that the opponent cannot raise this complaint or if he points it out that it does not have a major impact on the entire process.
V Costs to file the Opposition and costs after filing the opposition
After the opposition has been filed, the Institute called the applicant to make a payment of administrative costs and special costs for the procedure. Also, it could be more costs if parties want to proceed by emergency procedure or if they make any specific requests to the Institute during the procedure. All of the above mentioned is prescribed in Decision to amend the administrative fee tariff (“Official Gazette of Bosnia and Herzegovina”, No. 15/14) and Decision on the special costs of the procedure for the acquisition and maintenance of industrial property rights (“Official Gazette of Bosnia and Herzegovina”, No. 109/10) and all specific costs during the procedure depends on the procedure itself.
Considering all the above mentioned, we conclude that in each case, first, it must be determined whether the applicant and opponent trademarks refer to the same or similar type of goods or services. If such identity or similarity is established there is access to the examination of the signs themselves. Otherwise, if there is no similarity between the goods and services, opposition will be rejected. Also, it is important to meet the requirements from Article 36 of the Law on Trademark (The Content of the Objection). If the conditions laid down in Article 36 (together with the conditions of the Article 35 – regulations on deadline and regulations about who can be an interested person) are not fulfilled, the Institute shall reject the opposition by a conclusion. The entire further procedure depends on the evidence filed by the parties, the arguments they make in the proceedings and other relevant matters for proving the regularity of the impugned trademark application.
An Opposition of registered trademarks in Bosnia and Herzegovina should be conducted by a registered IP attorneys at law not just by registered IP representatives due to the fact that IP attorneys at law practicing litigation.
Huskic Law Office/Lejla Hasanović, associate