Bad-faith registrations likely to persist despite new law

Bosnia and Herzegovina
Until recently, Bosnia had only one law on IP rights, the Law on Industrial Property, which entered into force on August 27 2002 and covered patents, trademarks and designs, as well as geographical indications and designations of origin. The law, which was in force until January 1 2011, contained no provisions on bad-faith trademark applications.

Bad-faith applications were thus tolerated and a large number of well-known global brands fell prey of local counterfeiters. Legal remedies available in these situations were limited:
  • the Bosnian Patent and Trademark Office (PTO) did not recognise bad faith as one of the grounds for cancellation;
  • prosecutors refused to pursue bad-faith claims, claiming that there was no criminal intent; and
  • the civil courts were reluctant to issue decisions in unfair competition cases.
The new Law on Trademarks, in force as of January 1 2011, lists bad faith as one of the relative grounds for cancellation. However, if the earlier mark is not in actual use in Bosnia, it will be difficult to prove bad faith, especially as the PTO has traditionally favoured local companies.

The most notorious example of this practice is the case of Ekosan, an importer of textile products from China and Turkey, which is located in Banja Luka, northwestern Bosnia. The company registered almost 200 trademarks belonging to well-known apparel companies and requested customs monitoring. The company then managed to prohibit imports by other companies, including the actual owners of the marks. Among the trademarks registered by Ekosan are brands that are well known globally, but have no local presence in Bosnia.

Tarik Prolaz, PETOŠEVIC, Sarajevo

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