EnforcementTrademark 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.
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.
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.
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.