Geographical Indications and Appellations of Origins

– Law on the Protection of Geographical Indications of Products and Services, effective since January 1, 2004.
– Law on the Amending and Supplementing the Law on the Protection of Geographical Indications of Products and Services, in force since July 31, 2007.
– Law on the Amending and Supplementing the Law on the Protection of Geographical Indications of Products and Services, in force since May 7, 2011.
– Geographical Indications of Products and Services Rules, effective since June 1, 2004.
– Supplements to the Geographical Indications of Products and Services Rules, in force since June 1, 2008.
– Supplements to the Geographical Indications of Products and Services Rules, in force since June 15, 2011.

Filing

Applicant: (1) an association of manufacturers and/or processors of a specific product or service providers, regardless of the legal status of such association; (2) a particular manufacturer and/or processor, whether a natural or legal person, only in the following cases: if at the time of the filing of such application, the manufacturer or processor of the product or provider of a service for which it requests a registration of the geographical indication of origin or designation of origin, if it is the only one to use original and unchangeable local procedures and if the geographical area has properties differing significantly from the properties of the neighboring areas and/or if the properties of the products differ; (3) the bodies of the local and regional self-administration, chambers and institution interested in the protection of the geographical indication of origin or designation of origin on/in the area on which they are operating.

Foreigners and nationals not living in the country: must appoint a local patent agent.

Not registrable (grounds for exclusion): (1) if it is misleading the public regarding the geographical origin of the product or service; (2) if it induces to think that the said product or service is originating from a geographical area which is actually not its place of origin in a way which is misleading from the public regarding its geographical origin; (3) if it can, by its appearance or content, cause confusion in the course of trade with respect to the type, origin, quality, mode of production or other properties of the product or service; (4) if as a result of a long-term use it has lost its geographical meaning in the usual terminology and has become a generic name; (5) if it is identical to the name of a plant variety or animal breed, if it would be misleading for the public regarding the geographical origin of the product or service; (6) if it is in contravention of public order and moral; and (7) if it is not protected, or not protected anymore, or not in use anymore in the country of origin.

Territory covered: the Republic of Croatia.

Filing requirements for an application (to be sent to resident agent):
1. Application for the entry of the geographical indication or designation of origin;
2. Specification (description);
3. Proof of the protection of the geographical indication of origin or designation of origin in the form of a transcript of a public act or other legal act in the official language of the country of origin and a certified translation into Croatian, if the applicant is a foreign person;
4. Proof of payment of the administrative fee and costs of the procedure;
5. Power of attorney, if the applicant is represented by a patent agent or an attorney-in-fact;
6. Signature of the applicant or its agent.

Examination Procedure

Examination: the formal correctness and completeness of the application is examined first. If the application is not correct, the applicant is invited to remedy the defects within thirty days. At the applicant’s request containing an explanation, the Office can extend the said deadline by no longer than six months in total as of the first invitation to remedy the defects. If the applicant fails to correct the application by the said deadline or fails to pay the prescribed fee and indemnity for costs, the Office will reject the application for protection, i.e. for the entry of the right of use of the geographical indication of origin or designation of origin.

Substantial examination: if the application does not fulfill the conditions required, the Office shall deliver to the applicant the results of the examination with mention of the reasons for which the protection of the geographical indication of origin or designation of origin cannot be obtained, i.e. the right of use of the same cannot be recognized, and invite the applicant to make a statement on the said reasons within a specific period of time. At the applicant’s request containing an explanation, the Office can extend the said deadline by no longer than six months in total as of the first invitation to make a statement. If the applicant fails to make a statement, or if the applicant makes a statement and the Office is of the opinion that the geographical indication of origin or designation of origin subject to the application cannot be protected, i.e. that the person cannot be recognized the right to use, the Office shall adopt a decision to reject the application for the protection of the geographical indication of origin or designation of origin, i.e. the application for the recognition of the right of use of the geographical indication of origin or designation of origin.

Publication: a geographical indication application complying with the prescribed requirements shall be published in the Official Gazette.

Opposition to the published geographical indication application can be filed within three months after the publication, by an interested party as follows: (1) any interested party having its registered office or residence in the territory of the Republic of Croatia, can file an opposition to the published application if they consider it does not fulfill the conditions prescribed by the Law; (2) persons having the right of use of a trade name or registered trademark can file an opposition within the prescribed period of time if the said indication is fully or partly identical to such trade name registered in good faith and if the protection of the indication could affect the rights of such trade name or trademark in the view of the actual probability of confusion; (3) the person having the right of use of a trademark, which acquired a special reputation and became particularly known as a result of its earlier long-term use, has a right of opposition if the protection of the geographical indication of origin or designation of origin could be misleading for the public as to the true origin of the product. Should it be established by the Office that the opposition is not justified, it shall be rejected and a decision shall be delivered to the party having filed opposition and to the applicant. If the opposition is justified, the application shall be rejected and a decision delivered to the party having filed opposition and to the applicant.

Appeal: when a refusal decision has been taken, an appeal can be filed with the Board of Appeals of the Office within thirty days from the receipt of the decision. A suit against the decision of the Board of Appeals can be filed at the State Court (possible as of June 1, 2008).

Granting

Publication: the granted geographical indication is published in the Official Gazette upon the payment of a publication fee.

Beginning of protection: from the date of filing of the application.

Duration: the duration of a geographical indication of origin and designation of origin of a product and service is not limited. The right of use of a geographical indication of origin shall be valid for ten years as of the date of entry of the authorized user into the Register of authorized users of a geographical indication of origin or into the Register of users of a designation of origin.

Renewal: at the request of the authorized user, it can be extended for an unlimited number of times under the prescribed conditions.

Latest term for renewal: before expiry of the term for which the fees have been paid.

Term of grace for renewal: six months (with 100% fine).

User rights: a protected geographical indication of origin or designation of origin may be used by the persons who fulfill all the necessary conditions prescribed by the Law and who have been entered into the specific Register of users. The authorized user of a geographical indication of origin or designation of origin shall be entitled to use the protected name exclusively to designate the type of products to which this indication refers. The right conferred also covers use on the packaging, catalogues, prospects, advertisements and other forms of business documentation, as well as the import and export of products marked with this geographical indication of origin or designation of origin.

Marking of registered goods: optional.

Text of marking: the user of a geographical indication of origin shall be entitled to use the sign “ZP” in a circle, in addition to its protected name, as a geographical indication of origin, i.e. “I” in a circle as a designation of origin.

Assignment: not possible.

Licenses: license under written contract not permitted.

Modification of Protection after Registration

Nullification: the decision on the protection shall be proclaimed null and void if it is established that: (1) the conditions for the protection of the geographical indication of origin or designation of origin of a product or service, as prescribed by the Law, have not been fulfilled; (2) there were reasons for exclusion; and/or (3) the application for entry has been filed by an unauthorized person. A request can be submitted ex officio by any interested person or by the public prosecutor during the whole duration of the protection to the Intellectual Property Office. The decision of the Office can be appealed before the Board of Appeals of the Office. A suit against the decision of the Board of Appeals can be filed at the State Court (possible as of June 1, 2008).

Provision for restoration: possible by reinstatement into the former condition; the request has to be filed within eight days after the party has become aware that the action has been missed, and three months from the day on which the action should have been executed.

Infringement: an infringement suit may be filed within three years after the plaintiff has become aware of the infringement and no later than five years from the actual infringement.

Penalties: injunction, damages, publication of verdict, and payment of fine.