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
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
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
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