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What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation governing trademarks in Croatia is the Trademark Act (Official Gazette 173/03, 54/05, 76/07, 30/09, 49/11, 46/18).
Which international trademark agreements has your jurisdiction signed?
Croatia is a party to the following international agreements:
- the Madrid Agreement concerning the International Registration of Marks 1891;
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989) and amendments to the protocol;
- the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement, as well as amendments to the Common Regulations;
- the Administrative Instructions for the Application of the Madrid Agreement concerning the International Registration of Marks and the Protocol relating thereto, as in force on 1 January 2008;
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957;
- the Vienna Agreement establishing an International Classification of the Figurative Elements of Marks;
- the Trademark Law Treaty 1994; and
- the Singapore Treaty on the Law of Trademarks 2006.
Which government bodies regulate trademark law?
The primary government body for trademark-related laws is the Croatian State Intellectual Property Office.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
What legal protections are available to unregistered trademarks?
Owners of unregistered marks may file opposition and invalidation actions if their marks are well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property. Well-known marks also enjoy protection under the Croatian Trade Act, under the rules of unfair trade.
How are rights in unregistered marks established?
The rights holder 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 Organisation – namely:
- the degree of knowledge or recognition of the mark in the relevant sector of the public;
- the duration, extent and geographical area of any use of the mark;
- the duration, extent and geographical area of any promotion of the mark, including advertising or publicity, and the presentation, at fairs or exhibitions, of the goods or services to which the mark applies;
- the record of successful enforcement of rights in the mark – in particular, the extent to which the mark has been recognised as well known by competent authorities; and
- the value associated with the mark.
Are any special rights and protections afforded to owners of well-known and famous marks?
Owners of well-known marks may file opposition and invalidation actions against third-party trademark applications and registrations. If the earlier mark has a reputation in Croatia and where the use of the later mark, without justified reason, would take unfair advantage of or be detrimental to the distinctive character to the reputation of the earlier mark, the later mark will not be registered if it is identical or similar to an earlier trademark, even if registration has been requested for goods and services that are dissimilar to those for which the earlier trademark is registered.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademark registrations are recognised only to a limited degree as the State Intellectual Property Office is very strict in its assessment of the requirements to qualify as a well-known mark under Article 6bis of the Paris Convention..
What legal rights and protections are accorded to registered trademarks?
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 registration holder may also prohibit the following:
- affixing the sign to the goods or to the packaging thereof;
- 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 under the sign; and
- using the sign on business papers and in advertising.
Who may register trademarks?
Any natural or legal person may apply for and register a trademark.
Foreign legal and natural persons not having a principal place of business, domicile or habitual residence in Croatia shall, under the Trademark Act, enjoy the same rights as those enjoyed by the persons having a domicile or a real and effective industrial or commercial principal place of business in Croatia where such rights derive from:
- an international treaty binding Croatia; or
- the application of the principle of reciprocity.
What marks are registrable (including any non-traditional marks)?
Any sign capable of being represented graphically, particularly words and including personal names, designs, letters, numerals, the shape of goods or of their packaging, three-dimensional forms, colours, as well as the combinations of all of the above, 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.
Can a mark acquire distinctiveness through use?
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
The mark can be refused based on both absolute and relative grounds.
Are collective and certification marks registrable? If so, under what conditions?
Collective mark: Any sign that is registrable as a trademark under the Trademark Act and that is indicated as a collective mark in the application for registration may be protected as a collective mark if such sign is:
- capable of distinguishing the goods or services of the members or partners of a certain legal person from the goods or services of other undertakings; and
- intended for the collective designation of the goods or services put on the market by the members or the partners of that legal person.
Certification marks: Any sign that is registrable as a trademark under the Trademark Act may be protected as a certification/guarantee mark if such sign serves to designate the quality, origin, manner of production or other common characteristics of the goods or services of the undertakings that are under the supervision of the holder of the mark and use that mark.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Yes. The power of attorney needs to be signed only; neither legalisation nor notarisation is required.
What information and documentation must be submitted in a trademark registration application?
The basic requirements under the Trademark Act are that 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; and
- a representation of the sign for which registration is sought.
Further requirements are stipulated in the Trademark Regulations.
What rules govern the representation of the mark in the application?
The Trademark Act and the Trademark Regulations.
Are multi-class applications allowed?
Is electronic filing available?
What are the application fees?
Around €100 for a trademark application fee and application publication fee, or €200 for the 10-year protection fee and publication of grant fee, for up to three classes.
How are priority rights claimed?
If a trademark application is filed in accordance with the Trademark Act, the applicant will acquire the right of priority as of the application filing date over any other applicant filing a later application for an identical or similar sign in relation to identical or similar goods or services.
Applications filed under multilateral agreements to which Croatia is a party also give rise to a right of priority, as described below.
Union priority: If the applicant has filed the application for the first time in a member state of the Paris Union for the Protection of Industrial Property or in a member state of the World Trade Organisation, it may, when filing the application for the same trademark in Croatia, invoke the date of the first filing, provided that it files the application in Croatia within six months of the date of the first filing.
Exhibition priority: If the applicant has displayed the goods or services designated by the sign for which registration is sought at an exhibition held in any of the member states of the Paris Union or in any of the member states of the World Trade Organisation and that exhibition is officially recognised as international by Croatia, the applicant may request that the first day of exhibition of the goods or of provision of the services be recognised as the date of the first application, provided that the applicant files the application in Croatia within six months of that date.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches are available and recommended, but are not required. For urgent word mark searches, the cost is around €80 for up to three classes. For combined word and figurative mark searches, the cost is around €120. Further classes are paid additionally, per class.
The search request is filed with the State Intellectual Property Office, which will create the report in three days for urgent searches or 30 days for non-urgent searches.
What factors does the authority consider in its examination of the application?
The following will not be registered (absolute grounds for refusal):
- signs that may not be protected as trademarks under Article 2 of the Trademark Act (which concerns accepted forms for trademarks);
- signs that are devoid of any distinctive character in relation to the goods or services for which registration is sought;
- signs that consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the service, or to designate other characteristics of the goods or services;
- signs that 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 that consist exclusively of the shape which results from the nature of the goods as such, or the shape of goods that is necessary to obtain a technical result, or the shape that gives substantial value to the goods;
- signs that are contrary to public policy or to accepted principles of morality;
- signs 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;
- signs that have not been authorised by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property;
- signs for wines that contain or consist of geographical indications identifying wines and signs for spirits which contain or consist of geographical indications identifying spirits in connection to wines or spirits that do not have that geographical origin;
- signs that 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 authorisation of the competent authority of the Republic of Croatia; and
- signs that contain or consist of designations of origin or geographical indications, in effect in the territory of the Republic of Croatia, if a request for the registration of a trademark has been filed after the filing date of a request for the registration of a designation of origin or a geographical indication within the scope provided by legislation, by virtue of which such designations are registered, and that refer to the same type of products and services.
Does the authority check for relative grounds for refusal (eg, through searches)?
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Generally, no. The application can be limited only with regards to applied goods and services and information that pertain to the applicant’s data or correcting some obvious mistakes.
Can rejected applications be appealed? If so, what procedures apply?
Yes. An administrative action can be brought against decisions issued by the State Intellectual Property Office.
When does a trademark registration formally come into effect?
After its publication in the State Intellectual Property Office Gazette.
What is the term of protection and how can a registration be renewed?
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 the trademark owner:
- files with the State Intellectual Property Office a request for renewal of the registration of the trademark; and
- pays the prescribed fee and procedural charges in the course of the last year of the 10-year period of protection.
What registration fees apply?
Around €200 for 10 years’ protection.
What is the usual timeframe from filing to registration?
It takes nine to 12 months from filing.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Yes. A sign will not be registered on relative grounds for refusal if:
- it is identical to an earlier trademark registered for identical goods or services; or
- because of its identity 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.
For the purposes of the Trademark Act, ‘earlier trademark’ means:
- trademarks registered in Croatia, enjoying earlier priority right referred to in the Trademark Act;
- trademarks registered under international treaties having effect in Croatia, and enjoying earlier priority right referred to in the Trademark Act;
- applications for the registration of trademarks referred to in the first bullet above, provided that the trademarks reaches registration;
- trademarks that, on the date of application or, if priority is claimed, on the date of priority right claimed in the application, are well known in Croatia in the sense of Article 6bis of the Paris Convention.
In addition, a sign will not be registered if, upon filing of an opposition, the holder of an earlier trademark can prove that the sign for which registration is sought is identical or similar to its earlier trademark, even if registration is sought in relation to goods or services that are dissimilar to those for which the earlier trademark is registered, if:
- the earlier trademark has a reputation in Croatia; and
- the use of the later trademark, without due cause, would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trademark.
Further, upon filing of an opposition, a sign shall not be registered if its use would infringe one of the following earlier rights:
- a right to a personal name;
- a right of personal portrayal;
- a copyright; or
- industrial property rights.
For the purposes of the Trademark Act, ‘earlier right’ means rights acquired on a date that is earlier than the date of application for the registration of a trademark or, if priority right is claimed, the date of priority claimed in the application.
Further, a sign will not be registered, on the basis of an opposition, if:
- use of the sign would infringe the right of a person who, at the time of filing of the trademark application, had a company whose name, in whole or in part, is identical or similar to the sign in respect of which registration is sought; and
- the firm’s activity covers goods or services that are identical or similar to those for which registration is sought.
This ground for opposition is not valid, however, if the trademark applicant had an identical or similar company name at the time of filing its application.
Lastly, a sign shall not be registered following an opposition in the following two cases:
- If the sign is identical or similar to an earlier trademark that was registered for identical or similar goods or services where the registration has lapsed no more than two years previously, unless the holder of the earlier trademark gave its consent for the registration of the later trademark or did not use its own trademark; and
- If the application was filed by the trade agent or representative of a mark owner seeking registration in its own name, without the mark owner’s authorisation, unless the agent or representative justifies his or her action.
What is the usual timeframe for opposition proceedings?
Typically, one to two years.
Are opposition decisions subject to appeal? If so, what procedures apply?
Yes. An administrative action can be filed against the first-instance decision.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
A trademark may be revoked if it has not been put to genuine use in Croatia 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 revocation of a trademark with the State Intellectual Property Office.
The office will reject the request to cancel a mark for non-use if:
- the request is filed before the expiry of a period of five years from the registration of the trademark; and
- the request is not filed on the grounds specified in the Trademark Act.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark may also be revoked if, after the date on which it was registered:
- it has become a common name in the trade for products or services in respect of which it is registered as a consequence of acts or inactivity of the holder; or
- it is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services as the consequence of the use made of it by the trademark holder or with its authorisation in respect of those goods or services.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any natural or legal person may file a request for revocation of a registered trademark with the State Intellectual Property Office. There is no limitation period for revocation requests.
What are the evidentiary and procedural requirements for revocation proceedings?
The State Intellectual Property Office will notify the trademark owner of the request for revocation of the trademark as filed, and will send it a copy of the request, inviting it to submit observations on the request within 60 days.
If the trademark owner does not submit observations within the prescribed time limit, the trademark will be revoked for the goods or services in respect of which the request was filed.
The State Intellectual Property Office will transmit a copy of the observations furnished by the trademark owner to the party which filed a request for the revocation of a trademark and will invite it to file observations within a period of 60 days.
As part of the revocation procedure, the office may invite the parties to submit additional evidence, documentation and observations within 60 days of the day of receipt of the invitation to submit.
If a party to the procedure fails to submit addition evidence within the prescribed time limit, the office shall make a decision on the basis of the facts available to it.
A revocation for non-use will be rejected if genuine use of the trademark has started or resumed between the expiry of the five-year period of non-use and the filing of the revocation request.
What is the appeal procedure for cancellations or revocations?
Administrative actions are filed against first-instance decisions issued by the State Intellectual Property Office. The procedure is then followed by a court procedure before the Administrative Court in Zagreb.
What is the procedure for surrendering a trademark registration?
A trademark registration holder can file a declaration of surrender with the State Intellectual Property Office. The trademark registration shall cease to have effect on the day the holder submits the declaration of surrender.
Which courts are empowered to hear trademark disputes?
The commercial courts.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Civil, criminal and misdemeanour actions are available.
Civil actions: In accordance with the Trademark Act, a trademark registration holder may institute a legal action against any person that has infringed the holder’s mark, seeking:
- 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.
Criminal actions: 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 infringer 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.
Misdemeanour actions: In accordance with the Trademark Act, any legal person that uses a sign which is identical or similar to somebody else’s trademark, reproduces or imitates it, affixes it to goods or their packaging, offers for sale the goods designated by such a sign, puts them on the market or stocks them for such purposes, imports or exports the goods designated by such a sign, uses such a sign when providing services or on business papers and in advertising, without authorisation, shall be punished.
Natural persons, legal entities, and responsible persons in the legal entities, are liable to pay different fines. The fees are:
- €2,600 to €13,000 for legal entities;
- €260 to €1,300 for natural persons;
- €650 to €1,300 for responsible persons within the legal entities; and
- €650 to €6,500 for natural persons where the infringement took place during the activities of craftsmen.
Who can file a trademark infringement action?
Under the Trademark Act the following party may file an infringement action:
- the rights holder (ie, the person authorised by the rights holder under the general provisions on representation); and
- an exclusive licensee if so authorised by the licence agreement.
What is the statute of limitations for filing infringement actions?
The general statute of limitations is five years, and three years for remedies.
What is the usual timeframe for infringement actions?
It takes three to five years from filing to obtaining a final decision.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The Trademark Act and the general provisions of the Distraint Act govern the issuance of preliminary injunctions. The Distraint Act is the general act governing preliminary injunctions, while the Trademark Act sets out specific rules. Under the Trademark Act, on the request of a trademark owner which proves that its trademark has likely been infringed or threatened to be infringed, the court may order provisional measures comprising the termination or prevention of the infringement, particularly:
- ordering 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
- ordering the seizure or removal from the market of the goods unlawfully designated by a trademark.
Procedural rules within the court procedures are governed by the general Civil Procedure Act, as well as parts of the Trademark Act.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
A trademark owner can request remedies based on:
- the general provisions on remedies under the Obligations Act;
- the compensations provided for in a licence agreement typical for the circumstances of the case or
- the general provisions on unjust enrichment, as set out in the Obligations Act.
The remedies are not mutually exclusive.
Punitive damages are not allowed.
What customs enforcement measures are available to halt the import or export of infringing goods?
Mark owners may request Customs to record specific trademarks on a watch register. Customs will seize any goods that they deem are infringing the trademarks on the register and subsequently notify the relevant mark owner.
What defences are available to infringers?
Alleged infringers can respond to the claims brought by marks owner or entities authorised by them in a variety of ways. An infringer can argue that:
- the marks are not similar;
- the goods or services compared are not similar;
- the earlier mark has not been continuously used for five years;
- the infringer does not have standing in Court;
- the party which has issued the action does not have active legitimation to initiate proceedings; or
- the rights on which the action is based are not valid.
In customs enforcement procedures, the alleged infringer can file a complaint against the customs authorities if Customs have seized goods and the mark owner requests their destruction. In such case, the mark owner must initiate court proceedings.
What is the appeal procedure for infringement decisions?
Appeals can be filed against first-instance decisions issued by the commercial courts. These appeals have suspensive effect, and the case is then brought to the Higher Commercial Court.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
The Trademark Act and the Trademark Regulations regulate the assignment of trademark rights. The assignment must be recorded in order to have legal effect towards third parties.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
The Trademark Act and the Obligations Act govern trademark licensing, while the Trademark Regulations govern the procedural requirements before the State Intellectual Property Office.
A licensing agreement has effect:
- between the parties to the agreement after the signing of the agreement; and
- towards third parties upon recordal with the State Intellectual Property Office.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Typical provisions cover the duration of the agreement, the form of the mark as registered that may be used (eg, word or figurative), the scope of the goods or services for which the licence is granted, the territory in which the mark may be used, the quality of the goods manufactured or of the services provided by the licensee.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A trademark may be subject to securities and distraint procedures.
On request by one of the parties, the securities shall be entered in the register. The competent court for distraint procedures shall immediately notify the State Intellectual Property Office.
Such procedures have effect against third parties after their entry in the register.
A request for entry of securities in the register shall be filed under the conditions and in the manner prescribed in the Trademark Regulations.
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’.