Trademark system of Croatia

 

 

Introduction:

 

Language: Croatian

Capital: Zagreb

Area: 56,594 km2

Population: 4,190,700

Currency: Kuna (HRK)

Religion: Roman Catholics are the major part.

Geographical situation: between Central Europe, Southeast Europe, and the Mediterranean. The country is bordering Hungary to the northeast, Serbia to the east, Bosnia and Herzegovina to the southeast, Montenegro to the southeast, the Adriatic Sea to the southwest and Slovenia to the northwest.

 

 

International treaty membership:

 

Singapore Treaty on the Law of Trademarks (April 13, 2011)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (May 9, 2006)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (January 23, 2004)

Madrid Agreement Concerning the International Registration of Marks (October 8, 1991)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (October 8, 1991)

Paris Convention for the Protection of Industrial Property (October 8, 1991)

Convention Establishing the World Intellectual Property Organization (October 8, 1991)

Trademark Law Treaty (July 4, 2006)

 

Legislation:

 

Trademarks Act and Acts on Amendments to the Trademarks Act (OG Nos. 173/2003, 76/2007, 30/2009 & 49/2011)

 

Government Institutions:

 

State Intellectual Property Office of the Republic of Croatia (SIPO)

 

Type of trademark:

 

Any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, three-dimensional forms, colors, as well as the combinations of all the above indicated signs, may be protected as a trademark, provided that such signs are capable of distinguishing the goods or services of one undertaking from goods or services of another undertaking.

Also service marks, guarantee marks, collective marks and certification marks.

 

Ground for refusal :

 

There are two kinds of ground for refusal, absolute and relative one, the relative one will be taken in consideration only if a third person make opposition to the application for trademark.

 

Absolute grounds:

The following shall not be registered:

-  signs, which may not be protected as trademarks in accordance with the requirements set out in the grounds for refusal.

-  signs, which are devoid of distinctive character in relation to the goods or services for which registration is requested,

-  signs which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of providing of the service, or to designate other characteristics of the goods or services,

-  signs which consist exclusively of signs or indications which have become customary in the everyday language or in good faith and the established practices of trade,

-  signs which consist exclusively of the shape which results from the nature of the goods as such, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods,

-  signs, which are contrary to public policy or to accepted principles of morality,

-  signs which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services,

-  signs for wines which contain or consist of geographical indications identifying wines and signs for spirits which contain or consist of geographical indications identifying spirits with respect to such wines or spirits not having that geographical origin,

-  signs, which contain the name or abbreviation of the name, national coat of arms, emblem, flag or other official sign of the Republic of Croatia, or a part thereof, and the imitation thereof, except with the authorization of the competent authority of the Republic of Croatia.

 

Relative grounds:

Upon an opposition as filed, a sign shall not be registered:

-  if it is identical with an earlier trademark registered for identical goods or services, -  if because of its identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services, there is a likelihood of confusion on the part of the public, which includes the likelihood of its association with the earlier trademark.

-  trademarks which, on the date of application for the registration of a trademark, or, if priority is claimed, on the date of priority right claimed in the application, are well known in the Republic of Croatia.

 

Application content:

 

Multiple-class applications are possible.

Foreign applicants need a local agent.

A non-legalised power of attorney is sufficient.

An application for the registration of a trademark shall contain:

-  a request for the registration of a trademark,

-  information about the applicant,

-  a list of the goods or services for which the registration is requested,

-  a representation of the sign of which the registration is requested.

 

Application process:

 

The processing time from first filing to registration is approximatively 9 to 12 months.

The application is divided in several parts: formal examination, substantive examination and publication.

 

Formal examination: Between 1 and 2 months

This step consists in verifying every document required have been submitted for the application.

If the application for the registration of a trademark complies with the requirements but is not filed in a way to contain all the necessary elements and attachments in accordance with the Regulations, the Office shall invite the applicant to remedy the deficiencies within 60 days as from the day of receipt of the invitation.

The second step is the substantive examination which will verify is there is no ground for refusal.

When those two examinations has been done, and accepted, the decision will be published in the Croatian Intellectual Property Gazette of SIPO, allowing third person to make an opposition to the trademark protection within 3 months. If there are some, the applicant shall be notified and shall make observation within 60 days.

When the opposition has been taken in consideration and the application is still approved, the trademark shall be entered in state register and published in Official Gazette within 3 months after being in the register.

On request of the holder of a trademark, and subject to the prior payment of the prescribed procedural charges for the issuance of the trademark certificate, the Office shall issue the certificate to the holder of the trademark not later than within three months from the date of publication of the trademark in the Office official gazette.

 

Refusal:

 

The decision on the refusal of the registration in full or the decision on the refusal of the registration in relation to only some goods or services for which the registration was requested shall not be made before the applicant for the registration of the trademark is notified in writing about the grounds for refusal and invited to withdraw the application or to amend it or to submit his observations on the grounds for refusal of the registration

The applicant shall have the right to act within 60 days from the day of the receipt of the written notification of the grounds for refusal of the registration and to submit evidence on the possible new facts that might influence the final decision of the Office.

Any party entirely or partially adversely affected by the decisions of the Office issued in the first instance shall have the right to file an appeal within 30 days from the day of the communication of the decision.

 

Rights of exploitation and related delay:

 

The period of protection of a registered trademark shall last ten years from the date of filing of the application for the registration of a trademark and may be renewed indefinite number of times, for the periods of ten years each. This renewal can be done within 6 months after the expiry of the protection.

A registered trademark shall confer on its holder the exclusive rights, allowing the holder to prevent other parties using the mark except if it is his own name or address, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of providing of a service, or indications concerning other characteristics of goods or services.

The right holder is also allowed to contract license agreement with other parties or transfer his right to them.

 

Transfer and conditions:

 

The holder of a trademark may transfer his trademark to other persons in respect of some or all of the goods or services for which it is registered.

On request of one of the parties, the transfer of rights shall be entered in the register, if a certified copy of the transfer contract, or the certified part of the contract, or the original certificate of the transfer signed both by the former and the new holder of the right is submitted to the Office. Then the transfer of rights shall be published in the Office official gazette and it shall have effect against third parties after the entry thereof in the register.

 

Certification:

 

On request of the holder of a trademark, and subject to the prior payment of the prescribed procedural charges for the issuance of the trademark certificate, the Office shall issue the certificate to the holder of the trademark not later than within three months from the date of publication of the trademark in the Office official gazette.

 

Withdrawal and cancellation:

 

The applicant can withdraw his application at any time before it was published.

 

The trademark will end up if:

-  The mark has not been used for a consecutive period of five years.

-  The mark is similar or identical for same goods and service as an earlier one, on request of the earliest right holder

-  The use of the mark mislead the public

-  The holder surrenders his right

 

Customs protection:

 

The rights holders now have an option to either file the request for the national customs watch application or to file the request for the extension of the existing EU customs watch application to Croatia, while appointing a local representative in Croatia as a contact.

Customs institutions shall temporarily seize the goods suspected to be infringing certain intellectual property rights and they shall remain under customs control all until the procedure has been completed. In this way, a right holder or its legal representative is given a possibility to examine the goods, to exclude samples and to conduct investigation if an infringement is committed in a particular case. A right holder can request the goods infringing his intellectual property right to be destroyed or he can initiate appropriate court proceedings for the protection of his intellectual property rights.

 

Sources:

Wipo.int:

Trademarks Act and Acts on Amendments to the Trademarks Act (OG Nos. 173/2003, 76/2007, 30/2009 & 49/2011)

 

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