trade mark law, which entered into force
on 15 July 2016. It brings about changes
necessitated by economic and legal
developments in Belarus and aims to
clearly specify the scope of trade mark
rights and outline local trade mark
procedures.
of relative and absolute grounds for
refusal, making the registrability threshold
more stringent. Under the new law,
relative grounds examination includes
checking new trade mark applications
against earlier, third party industrial
designs and plant varieties, along with the
earlier, third party trade marks and
commercial names.
the former law prohibited trade marks or
designations that consist solely of signs or
indications which serve to designate the
kind, quality, quantity, intended purpose,
value, the place or the time of production
of the goods or of rendering the service.
The new law prohibits registration of
trade marks if the signs or indications
hold a dominant position.
rationalize formal application
requirements, the law no longer allows
haphazard indication of the applied-for
goods and services. Instead, it obliges the
applicant to group the list of goods and
services into classes in an orderly fashion.
concerning the method of representation
of a three-dimensional mark, which should
be represented in two dimensions as
either a drawing or a photograph. The
provision leaves flexibility to the applicant
as to the number of representations they
might want to include, be that a single
image or a set of images showing the
mark from different angles. Another
provision establishes a mandatory colour
claim and invites the applicant to use the
CMYK colour model by either naming the
colours or colour codes.
information related to trade mark
applications that successfully passed formal
examination will be made public, to enable
third parties to comfortably track and
examine new applications. Trade mark
details should be published online within
two months following the end of formal
examination.
resulted in a time limit of two years and
two months for the examination period,
two months of which will be allocated to
be reserved for substantive examination.
Additionally, the time for publication in the
Official Bulletin should be factored in,
which has been shortened to two months
(previously it was three months). One
month has been set for the issuing of a
registration certificate. Thus, in total, the
whole registration process should not
exceed a period of two years and five
months.
regarding license agreement requirements.
The new law introduces an alternative to
the usual and obligatory quality control
provision - "the quality of goods and
services manufactured or rendered under
license shall not be inferior to the quality
of goods and services of the trade mark
holder". So called quality indicators
GOST standards maintained by the Euro-
Asian Council for Standardization,
Metrology and Certification (EASC), a
regional standards organization, may now
be used to enable licensors, who have not
put any goods on the market, and are thus
unable to provide any information on the
quality of goods, to actually sign the
license agreement.
businesses entering license agreements are
now also explicitly inscribed into the law.
the public domain are no longer subject to
cancellation actions before the Board of
Appeals, which generally has jurisdiction
over other matters such as reviewing
cases that involve unlawful trade mark
registration. To cancel a trade mark that
has become generic, a cancellation action
should be now brought before the
Supreme Court.
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
trade mark applications and registrations.
Union's 19 June 2012 decision in the IP
Translator 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.
regulations did not include any details on
the goods and services, other than formal
requirements, such as properly classifying
the goods, distinguishing classes and
document.
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 inconsistency of
procedures.
uniform first came about as a result of an
EU-funded project that led to the creation
of the first official methodology for trade
mark examination, which entered into
force in January 2015. The methodology
includes guidelines on all aspects of trade
mark 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 1 January,
2015.
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 also
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.
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
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.
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.
requirement of graphical representation
will be even more difficult to implement,
as the current trade mark law (Article 4)
prescribes that in order to be eligible for
trade mark protection, a mark must be
graphically representable. In order to
implement this change, the law would
need to be amended and subordinate