For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 31 January 2011

The bad-faith bandit from Banja Luka

Consumers in Banja Luka: do they know who is monitoring
the importation of their favourite brands?
The IPKat's Ministry for Nasty Practices has been growling about the WIPD scam for long enough; it's time to focus on other miscreants. Via his helpful friend Jelena Jankovic (Petosevic) he has learned all about another naughty business, EKOSAN. The story goes like this:
"Until recently, Bosnia had only one law on IP rights, the Law on Industrial Property, which entered into force on 27 August 2002 and covered patents, trade marks, designs and geographical indications and designations of origin. The Law, which was in force until 1 January 2011, had no provisions regarding bad faith trade mark applications.

Bad faith applications were therefore tolerated and a large number of well-known global brand names passed into the hands of local counterfeit sellers. Legal remedies available in these situations were limited. The Bosnian PTO did not recognize bad faith as one of the grounds for cancellation, prosecutors refused to pursue bad faith cases claiming there was no criminal intent and the civil courts were reluctant in issuing decisions in unfair competition claims.

The new Law on Trade Marks, in force as of 1 January 2011, listed bad faith as one of the relative grounds for cancellation. However, without the actual use of the mark in Bosnia, it will be difficult to prove bad faith, especially with the PTO that 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, located in Banja Luka, northwestern Bosnia. The company registered almost 200 trade marks that belong to well-known apparel companies and requested customs monitoring. The company then managed to prohibit import attempts by other companies, including the actual owners of the marks. Among the trade marks EKOSAN registered are brands that are well known globally, but without any local presence, marketing or campaign in Bosnia. The company has even started to register some of the well-known marks in other countries in the region".
The IPKat can scarcely imagine how galling it must be for brand owners to be excluded from the opportunity to monitor the importation of goods bearing their own trade marks and other indicia.  But the lesson is clear.  For as long as trade mark rights are territorial and not global -- which is likely to be forever -- international businesses have to take the lead in registering and protecting their brands.  It is an expense and it is an inconvenience, but it this this that underpins the credibility of a trader's goods and services and protects consumers too.  Merpel says, it seems bizarre that, as late as 2002, a country could pass an intellectual property law that contained no provision for dealing with bad faith trade mark applications.  It's not as if there weren't plenty of examples of other people's trade mark laws to look at.  What were the Bosnian legislators thinking of?

3 comments:

Anonymous said...

Bad! Did Bosnia not want to join the EU ...

Worse! Is there a grandfather clause somewhere which would give Bosnian registered marks some protection against revocation once Bosnia joined the EU?

Worst! Could Bosnian registered marks be having a kind of penumbra effect in the rest of the EU??

(P.S.: It's been a long time since I last had to consider anything to do with trademarks)

Anonymous said...

Croatia and Montenegro are EU candidate countries - http://www.bbc.co.uk/news/world-europe-11283616 - and Serbia also wants to join. A little bit of pressure from the EU on those three, and checks carried out at EU borders, could interfere effectively with export to the EU of goods bearing those false trade marks.

And if the legitimate owners were to ask for customs monitoring in any other known destination countries, would not the value of the marks to their Bosnian owners rapidly approach zero?

Tony McStea said...

This used to be a practice in Oz in the good old days before the Internet and more rapid communications, when Australia was relative backwoods. Sharp operators would scan overseas magazines, try to guess whether those brands would come to Oz and register them. The Oz courts would bend over backwards to fight it, even being prepared to consider advertising in magazines imported into Australia as "use", to give the proprietors prior common law rights. In one celebrated case, the owners of the US drink Seven Up tried and failed to obtain rectification of the Register in respect of "8 Up", registered by an Oz pirate.

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