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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.
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