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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.
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