Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The Trademark Act (Official Gazette No. 14/19) and Trademark Regulations (Official Gazette No. 38/19).

International law

Which international trademark agreements has your jurisdiction signed?

Croatia is a party to the following international agreements:

  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;
  • the Paris Convention for the Protection of Industrial Property (Paris Convention);
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Agreement);
  • the Madrid Agreement Concerning the International Registration of Marks;
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
  • the Convention Establishing the World Intellectual Property Organization; and
  • the Berne Convention for the Protection of Literary and Artistic Works.
Regulators

Which government bodies regulate trademark law?

The Croatian State Intellectual Property Office (SIPO).

Registration and use

Ownership of marks

Who may apply for registration?

Any natural or legal person.

Foreign natural and legal persons in Croatia enjoy the same rights as are enjoyed by resident natural and legal persons, if they result from the international treaties or from the principle of reciprocity.

Scope of trademark

What may and may not be protected and registered as a trademark?

A trademark may consist of any signs, particularly words, including personal names, or designs, letters, numerals, colours, the shape of goods or of their packaging, or sounds, provided that such signs are capable of distinguishing the goods or services of one undertaking from goods or services of another undertaking and being represented in the register in the way that enables competent authorities and the public to determine a precise and clear subject-matter of protection provided by the trademark to a holder.

Unregistered trademarks

Can trademark rights be established without registration?

The stipulations of the Trademark Act are clear; in Croatia, a trademark shall be acquired by registration.

Trademarks that are not registered may in some circumstances be protected in Croatia. The most common example of unregistered trademarks that benefit from protection in Croatia refers to well-known trademarks.

The mark owner must prove the well-known status of the mark based on the criteria established in the Joint Recommendations Concerning Provisions on the Protection of Well-known Marks of the World Intellectual Property Organization.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Foreign trademark registrations are recognised by SIPO to a limited owing to stringent SIPO assessment requirements to qualify as a well-known mark under article 6-bis of the Paris Convention.

The benefits of registration

What are the benefits of registration?

Trademark registration is not obligatory at the time of putting the goods or services into circulation; however, it is useful to protect particular aspects of the goods and services.

A trademark registration holder is entitled to prevent third parties from using, in the course of trade and without consent:

  • any sign that is identical to the holder’s trademark in relation to goods or services that are identical to those for which the trademark is registered;
  • any sign where, because of its identity or similarity to the holder’s trademark and the identity or similarity of the goods or services covered by the trademark and the sign, there is a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trademark; and
  • any sign that is identical or similar to the holder’s trademark in relation to goods or services that are not similar to those for which the trademark is registered, where the trademark has a reputation in Croatia and where use of that sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trademark.

A trademark holder may also prohibit:

  • affixing the sign to the goods or their packaging;
  • offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or providing services thereunder;
  • importing or exporting the goods;
  • using the sign on business papers and in advertising; or
  • using the sign in comparative advertising in a manner that is contrary to the regulations of the European Union and Croatia concerning misleading and comparative advertising.

Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the registered trademark, the holder is entitled to prevent bringing goods, in the course of trade, into Croatia without being released for free circulation there, where such goods, including packaging, come from third countries and bear without authorisation a trademark that is identical to the trademark registered in respect of such goods, or that cannot be distinguished in its essential aspects from that trademark. The entitlement of the proprietor of a trademark shall lapse if the declarant or the goods' holder provides evidence that the holder of the registered trademark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

The basic requirements under the Trademark Act are as follows:

  • a request for the registration of a trademark;
  • information about the applicant;
  • a list of the goods or services; and
  • a representation of the sign.

Applicant’s representatives are required to submit an original power of attorney, simply signed.

Trademark application rules are prescribed by the stipulations of the Trademark Act and the Trademark Regulations.

Electronic filing is available.

Application fees amount to approximately €100 for an application up to three classes.

Trademark searches are available and recommended, but not required. The cost of an urgent word mark search amounts to €80 for up to three classes. The cost of an urgent combined word and figurative mark search amounts to €120. Further classes are charged additionally, per class.

The search request is filed with SIPO, which will create the report in three working days for urgent searches or 30 days for non-urgent searches.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The registration procedure can be completed in approximately six to nine months. The registration fees amount to €200 for an application up to three classes. A trademark registration formally comes into effect after its publication in SIPO's Official Gazette.

An opposition against the trademark application, would increase the time before final registration. It would also increase the cost for registration, as extra official fees could be required, depending on the developments in the opposition proceedings.

Trademark registration is valid for 10 years. The registration of a trademark may be renewed an indefinite number of times, for 10-year periods, provided that trademark holder files a request for renewal of the registration with SIPO and pays the prescribed fee and procedural charges (approximately €210 for registration up to three classes) in the course of the last year of the 10-year period of protection.

For late renewals there is a six-month grace period for payment of the renewal fees plus surcharge.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The list of goods and services provided in the application must be in accordance with classes 1 to 45 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks established by the Nice Agreement (1957). Currently, the eleventh edition of the Nice Classification is in use.

Class headings no longer cover every item falling within that class, but only those goods and services that fall within the natural and ordinary meaning of the particular term.

It is possible to apply for multiple classes at once, and it is more cost-effective: an additional official fee of €21 per class is charged in the application phase, and €41 per class is charged in the registration phase, starting at the fourth class targeted.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The following shall not be registered (based on absolute grounds for refusal):

  • signs that do not conform to the requirements of article 6 of the Trademark Act;
  • trademarks that are devoid of any distinctive character;
  • trademarks that consist exclusively of signs or indications that 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 rendering of the service, or to designate other characteristics of the goods or services;
  • trademarks that consist exclusively of signs or indications that have become customary in the everyday language or in good faith and the established practices of the trade:
    • signs that consist exclusively of:
      • the shape, or another characteristic, which results from the nature of the goods themselves;
      • the shape, or another characteristic, of goods that is necessary to obtain a technical result; and
      • the shape, or another characteristic, which gives substantial value to the goods;
  • trademarks that are contrary to public policy or to accepted principles of morality;
  • trademarks that 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;
  • trademarks that have not been authorised by the competent authorities and are to be refused pursuant to article 6ter of the Paris Convention;
  • trademarks that are not covered by article 6ter of the Paris Convention, and that include the name or abbreviation of the name, national coat of arms, emblem, flag or other official sign of Croatia, or a part thereof, and the imitation thereof, except with the consent of the competent authority of Croatia;
  • trademarks that are excluded from registration, pursuant to union legislation or the national law of Croatia or to international agreements to which the union or Croatia is a party, providing for protection of designations of origin and geographical indications;
  • trademarks that are excluded from registration pursuant to union legislation or international agreements to which the union is a party, providing for protection of traditional terms for wine;
  • trademarks that are excluded from registration pursuant to union legislation or international agreements to which the union is a party, providing for protection of traditional specialities guaranteed;
  • trademarks that consist of, or reproduce in their essential elements, an earlier plant variety denomination registered in accordance with union legislation or the national law of Croatia, or international agreements to which the union or Croatia is a party, providing for protection of plant variety rights, and that are in respect of plant varieties of the same or closely related species;
  • trademarks that can be banned from use in the public interest in accordance with the provisions of other regulations having effect in Croatia.

Grounds from bullet points two, three and four above shall not apply if the trademark has become distinctive in relation to the goods or services for which registration is requested as a consequence of the use that has been made of it, before the date of filing.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

It is not necessary to claim use of a trademark or service mark before registration is granted or issued. However, it might be necessary in the event that the chosen sign cannot be considered distinctive per se in regard to the goods and services targeted: proof of use will then enable the applicant to prove that the sign has acquired distinctiveness with regard to the specific goods and services.

Croatia implements article 4 of the Paris Convention and grants a right of priority to any trademark registered abroad within the previous six months. In order to claim priority, the applicant must have a valid application with regard to the legal requirements abroad, irrespective of the final outcome of the procedure. Priority must be claimed at the time the application is made, and the application must provide SIPO with the necessary documentation establishing the prior application.

A trademark must be genuinely used, otherwise, after five years, a third party can request a non-use cancellation of the trademark. It is important to provide substantial proof of use (marketing materials, brochures and invoices, etc) considering that the burden of proof rests on the trademark holder.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Marking is not mandatory.

Appealing a denied application

Is there an appeal process if the application is denied?

An administrative action can be brought against decisions issued by SIPO (ie, a court procedure before the Administrative Court in Zagreb).

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Applications are published for opposition purposes in SIPO's Official Gazette. The opposition period lasts three months following publication of the application. The deadline is non-extendible. The opposition must include evidence of official fees paid, which amounts to €81.

Opposition proceedings are available to:

  • holders of earlier applications or registrations;
  • holders of a well-known trademark;
  • holders of a trademark that has an earlier priority date;
  • owner of a company entered in a court register before the trademark application date;
  • an exclusive licensee;
  • a person authorised under the relevant law to exercise the rights arising from a designation of origin; or
  • a geographical indication.

The opposition is notified without delay to the applicant giving them 60 days to respond. An opponent should file all available evidence at the time of filing the opposition.

The evidence usually includes documentation (eg, trademark certificates, examples of use, evidence to prove reputation, consumer awareness and similar evidence). In most cases, SIPO will issue the decision based on the filed opposition and response, no additional rounds of submissions are needed. The usual time frame of the opposition proceeding is approximately one year. SIPO issues a first-instance decision, subject to an administrative action.

A trademark may be cancelled owing to non-use if it has not been put to genuine use for a continuous period of five years in relation to the goods or services for which it is registered and there are no justified reasons for non-use.

Any natural or legal person may file a request for non-use cancellation with SIPO. The official fee amounts to approximately €154.

As regards bad faith applications, such marks can be contested in cancellation (invalidation) proceedings. A holder of an earlier right may file a request for cancellation of a trademark with SIPO, the official fee amounts to approximately €347. The trademark will not be declared invalid if the holder proves that the trademark has acquired a distinctive character in relation to the goods or services for which it is registered before the date of filing the request for cancellation.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

As indicated in relation to questions up to question 10, a trademark is registered for an initial term of 10 years, starting on the day of filing. It can be renewed for additional 10-year terms an indefinite number of times.

There is no required proof of use to obtain the renewal, only the request filed on a prescribed form and a payment of a fee. However, if the mark has not been genuinely used for an uninterrupted period of five years, a third party may request a non-use cancellation of the trademark.

Surrender

What is the procedure for surrendering a trademark registration?

A trademark registration holder can file a declaration of surrender with SIPO. The trademark registration shall cease to have effect on the day the holder submits the declaration of surrender.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Yes, although this depends on their form and compliance with other types of industrial property requirements for protection. For instance, trademarks can be protected as copyright if they comply with the requirements prescribed in the Copyright and Related Rights Act; trademarks can be protected as designs if they meet specific criteria specified the Industrial Design Act.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The Trademark Act and the Trademark Regulations govern the establishment and administration of the country-code top-level domain .hr.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A licence may be recorded against a mark in Croatia. On request (filed on the Ž-2 form together with a proof of payment of the official fees) of one of the parties the grant of a licence in respect of a trademark shall be entered in the Register if SIPO receives any of the following evidence:

  • a certified excerpt of a licensing agreement indicating the parties to it and the rights to be licensed; and
  • an original certificate of granting the licence signed by a grantee and a licensee.

Recordal of licence is not mandatory, because the licence is effective per se as a binding contract based on the Civil Obligations Act. However, with regards to the effect towards third parties, the licence should be recorded before the SIPO, since it shall have effect against third parties after the entry thereof in the Register.

If the licence is recorded, the licensee can enforce trademark rights. When it comes to civil protection, the protection of the rights under Trademark Act may be claimed by a holder of the licence to the extent that he or she is authorised for that purpose on the basis of a legal transaction or law. The licensee may bring proceedings for trademark infringement only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trademark, after formal notice, does not themselves bring infringement proceedings within an appropriate period. A licensee shall, for the purpose of obtaining compensation for damage suffered by them, be entitled to intervene in infringement proceedings brought by the proprietor of the trademark.

Typically, a licensing agreement includes provisions covering its duration, the form covered by the registration in which the trademark may be used, the scope of the goods or services for which the licence is granted, the territory in which the trademark may be affixed, the quality of the goods manufactured or of the services provided by the licensee.

Assignment

What can be assigned?

A trademark may be assigned, with or without goodwill, with or without other business assets, in respect of some or all of the goods or services for which it is registered. An assignment of the whole company or business includes the assignment of the trademark except where, in accordance with the law governing the assignment, there is agreement to the contrary or circumstances clearly dictate otherwise.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

An assignment of the trademark must be made in writing and requires the signature of the parties to the contract, except when it is a result of a judgment; otherwise, it is void.

On request (filed on form Ž-2 together with a proof of payment of the official fees) of the assignor or the assignee, or, depending on a case, upon notification by a competent court or a notary public, the assignment of a trademark shall be entered in the Register, if SIPO receives any of the following evidence:

  • a certified copy of the assignment agreement or a court decision on the assignment or inheritance of a trademark, or a decision by a notary public on the inheritance of a trademark;
  • a certified excerpt of the agreement or a decision as referred to in the above point;
  • an original certificate of the assignment of a trademark signed by the assignor and the assignee; or
  • an original court decision on the assignment or inheritance of a trademark, or a decision by a notary public on the inheritance of a trademark.
Validity of assignment

Must the assignment be recorded for purposes of its validity?

Recordal of assignment is not mandatory, as the assignment is effective per se as a binding contract based on the Civil Obligations Act. However, with regards to the effect towards third parties, the assignment should be recorded before SIPO, since it shall have effect against third parties after the entry thereof in the Register.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

A trademark may be given as security or be the subject of rights in rem. On request of one of the parties (filed on form Ž-2 together with a proof of payment of the official fees), the rights in rem shall be entered in the Register. Proof of the existing right in rem (any contract or agreement in original or certified copy) is to be submitted. Such procedures have effect against third parties after the entry thereof in the Register.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark enforcement proceedings can be carried out in civil, criminal and misdemeanour actions.

There are no specialised courts in Croatia for intellectual property. Intellectual property cases are heard before the commercial courts; intellectual property criminal cases are heard before county criminal courts, while the Customs Office is the competent authority for misdemeanour procedures.

In accordance with the Criminal Code, criminal charges may be brought against any party that, contrary to regulations on trademark protection in commerce, uses a mark that is identical to a registered trademark with regards to goods or services that are identical to those for which the trademark is registered, or a mark that is identical or similar to a registered trademark with regards to goods and services that are identical or similar to those for which the trademark is registered, where such use misleads the public as to the origin of the source of the goods or services and gives the infringer considerable economic gain or causes substantial damage to the rightful mark owner.

‘Use’ includes highlighting a mark on the product or its packaging, or offering or placing on the market or storing the product for these purposes under that mark, or offering or providing services under the sign; or importing or exporting products labelled with the sign or using the sign on business products and advertising.

Criminal infringers are liable to imprisonment of up to three years.

An attempt to commit an act that amounts to a criminal offence as described above is also punishable.

Procedural format and timing

What is the format of the infringement proceeding?

Trademark infringement cases are filed before the competent courts. Within the procedure, claimants can offer evidence such as expert opinions, testimony from witnesses, and other evidence. However, in most cases, judges will issue a decision based solely on documents (trademark certificates, reports, evidence that shows infringement), as they deem this is the only evidence required. Testimonies of witnesses are rare in these proceedings, and judges rely on expert opinions if they deem they cannot resolve the matter or do not understand the subject matter themselves.

Procedures before a commercial court last about two to three years before issuance of the first-instance decision. Procedures before a criminal court last about one year before issuance of the first-instance decision.

Burden of proof

What is the burden of proof to establish infringement or dilution?

The claimant has the burden of proof to establish infringement.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Apart from a trademark holder, the protection of the rights under the Trademark Act may be claimed by a holder of the licence to the extent that he is authorised for that purpose on the basis of a legal transaction or law.

Independent of the provisions under a licence agreement, the licensee may bring proceedings for trademark infringement only if its proprietor consents thereto. However, the holder of an exclusive licence may bring such proceedings if the proprietor of the trademark, after formal notice, does not himself bring infringement proceedings within an appropriate period.

A licensee shall, for the purpose of obtaining compensation for damage suffered by him or her, be entitled to intervene in infringement proceedings brought by the proprietor of the trademark.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Once a trademark is registered, the rights holder can apply for customs border protection. Customs will seize any goods that they deem are infringing of trademarks for which the border protection is set and notify the rights owner who can request destruction of counterfeit goods. In case of regional cooperation with neighbouring customs offices, the domestic customs office can take into account the information received through such channels.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

The holder of a trademark who initiated civil proceedings may request the provision of information on the origin and distribution channels of the goods or services infringing his or her trademark, including:

  • information on producers, distributors, suppliers and other previous holders of the goods or services, wholesalers and retailers; and
  • information on the quantities produced, delivered, received or ordered, as well as the price obtained for the goods or services.

The request may be made against the defendant or against:

  • a person who is within their economic activities in possession of the goods or uses services suspected of infringing a trademark;
  • a person who provides, within their economic activities, services used in the activities suspected of infringing a trademark; or
  • a person who is indicated by any of the above-mentioned persons as being involved in the manufacture or distribution of the goods or the provision of the services suspected of infringing a trademark.

The person required to provide the information may refuse to provide them on the same grounds as those allowing the refusal to present evidence as a witness pursuant to the provisions governing civil proceedings.

Where a party to the civil proceedings invokes documents or other evidence and claims that they lie with the opposing party or a third party, the court shall invite those parties to present such documents, or evidence.

The provisions of the general regulations governing civil proceedings relating to the right of refusal to present evidence as a witness apply mutatis mutandis. Where presenting evidence is related with certain costs incurred to a third party, the court shall invite the claimant to lodge an advance for such expenses. A third party shall be entitled to compensation of justified costs incurred to them related to the disclosure of evidence.

Upon the request of the holder of a trademark who makes it likely that his or her trademark has been infringed or threatened to be infringed, the court may order a provisional measure comprising the preservation of evidence, including:

  • preparation of a detailed description of the goods infringing a trademark, with or without taking of samples;
  • seizure of the goods made likely to infringe a trademark; and
  • seizure of the materials and implements used in the production and distribution of the goods made likely to infringe a trademark and seizure of the documentation relating thereto.
Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

  • a preliminary injunction: one year;
  • at trial level: two to three years for the first-instance decision; and
  • at appeal: one to two years for the appeal decision.
Limitation period

What is the limitation period for filing an infringement action?

The general statute of limitations is five years, and three years for remedies.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Parties in the court procedure pay official fees and attorney fees.

Official fees are paid for certain actions such as filing the lawsuit, issuance of first-instance decision, appeals, payment of expert opinions, etc. They are dependent on the dispute value of the proceedings, and are capped at €675.

Attorney's fees are calculated and decided upon the in the first-instance decision (and later in the appeal). Chargeable actions include submissions, hearings and similar actions. They are dependent on the dispute value of the proceedings, and one action is capped at €13,000.

Appeals

What avenues of appeal are available?

Appeals against first-instance decisions have to be filed eight days after receipt of the first-instance decision. The Higher Commercial Court is the competent court for appeal decisions.

In criminal procedures, regional criminal courts are competent to decide upon appeals.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Alleged infringers can respond to the claims brought by the marks owner or entities authorised by them in a variety of ways. The infringers can argue the marks are not similar, the goods or services in comparison are not similar, the earlier mark has not been continuously used for five years, the infringer does not have standing in court, the party that has issued the action does not have active legitimation to initiate proceedings, the rights on which the action is based are not valid, the trademark registration has lapsed, etc.

In customs enforcement procedures, the alleged infringer can file a complaint against the customs authorities if the customs authorities have seized goods and the mark owner requests their destruction. In such a case, the mark owner must initiate court proceedings.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

Parties can file for main action and preliminary Injunctions.

Within the main action claim in the civil procedures, parties can file:

  • to establish the infringement;
  • to terminate the infringement and to cease all further actions with regards to the infringement;
  • the seizure and destruction of the infringing objects;
  • damages, usual compensation and unjust enrichment; and
  • publication of the judgment.

As for monetary relief, these can be calculated in a number of ways, such as being based on:

  • general stipulations regarding remedies;
  • stipulations in the Trademark Act; and
  • unjust enrichment stipulations.

When determining the amount of compensation, the court shall consider all of the corresponding factors, such as negative economic consequences, including lost benefit suffered by the entity, any unfair profit gained by the infringer and, when deemed appropriate, elements that are not economic factors, such as non-material damage.

The Trademark Act and the general provisions of the Distraint Act are the Acts that govern the issuance of Preliminary Injunctions. The Distraint Act is the general act that governs preliminary injunctions, while the Trademark Act sets specific rules for trademark infringements. In accordance with the Trademark Act upon the request of the holder of a trademark who makes it likely that his or her trademark has been infringed or threatened to be infringed, the court may order any provisional measure comprising the termination or prevention of the infringement, and in particular:

  • order the opposing party to cease or desist from, the acts infringing a trademark; the court may also issue such order against an intermediary whose services are being used by a third party to infringe a trademark; and
  • order the seizure or removal from the market of the goods unlawfully designated by a trademark.
ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

ADR techniques are available; disputes can be settled by way of in-court mediation or out-of-court specialised entities. In-court mediation decisions are enforceable immediately, while out-of-court decisions depend on the terms and conditions of the ADR agreement.

ADR procedures are not frequent in Croatia. Benefits include lower attorney fees, faster issuance of decisions and flexibility in settlements, while the risks include no legal remedies (binding decisions), and lower compensation amounts.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

Key developments of the past year39 Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

The State Office has recently applied stricter criteria for trademark applications, having in mind absolute grounds of refusal. Trademark applications are now more frequently rejected, causing trademark owners to be more mindful when preparing new trademark applications.