Registration and useOwnership 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.