Trade and Service Marks
– Trademark Law of the Republic of Croatia, effective since January 1, 2004.
– Law on the Amending and Supplementing of the Trademark Law, in force since July 31, 2007.
– Law on the Amending and Supplementing of the Trademark Law, in force since March 17, 2009.
– Law on the Amending and Supplementing of the Trademark Law, in force since May 7, 2011.
– Trademark Rules, effective since November 14, 2007, as amended on June 15, 2011 with effect from June 15, 2011, and as amended on September 30, 2013 with effect from October 10, 2013.
Membership in International Conventions
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since January 24, 1965.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since October 8, 1991.
– Madrid Agreement Concerning the International Registration of Marks, Stockholm Act, since October 8, 1991.
– Nice Agreement Concerning the International Classification of Goods and Services, since October 8, 1991.
– WTO’s TRIPS Agreement, since November 30, 2000.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since January 23, 2004.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since May 9, 2006.
– Trademark Law Treaty, since July 4, 2006.
– Singapore Treaty on the Law of Trademarks, since April 13, 2011.
– European Union Trade Mark Regulation.
Applicant: natural persons or legal entities.
Foreigners and national not living in the country: must appoint a local trademark representative.
Trademarks of foreigners: have the same rights as nationals in accordance with the conventions or agreements, or on the basis of reciprocity.
Kind of protection: individual, collective and certification trademarks.
Service marks: protection is provided for.
Not registrable (absolute grounds for exclusion): (a) a mark which is contrary to the public order or morality; (b) a mark which is not able of being represented graphically; (c) a mark which is not able, due to its representation, of distinguishing the goods or services in trade; (d) a mark which consists exclusively of signs or indications serving in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of services, or some other characteristics of the goods or services; (e) a mark which consists exclusively of marks or indications which are customary in the current or professional language or established practices of the trade; (f) a mark which represents exclusively the shape defined by the kind of goods, or the shape of the goods necessary to obtain a specific technical result, or the shape giving a substantial value to the goods; (g) a mark which may, by its representation, deceive the public particularly as to the geographical origin, nature quality or any other characteristic of the goods or services; (h) a mark which contains or consists of geographical indication identifying wines or spirits, but refers to the wines or spirits which are not of such geographical indication; (i) a mark which contains a national coat of arms or other public arms, a flag or an emblem, the name, or the abbreviated name of a country or of an international organization, and the imitations thereof, except with the authorization of the competent authority of the country or the organization; (j) marks, which have not been authorized by the competent authorities and are to be refused pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property (hereinafter “the Paris Convention”); (k) marks containing genuine markings, or markings of geographical origin valid in Croatia, if such request was filed after the request for granting genuine markings, or markings of geographical origin, in the scope encompassed for the same kind of goods and services. Registration shall not be refused to marks specified in (c), (d) and (e) if the applicant proves that the mark has, before the date of application for registration and following the use which has been made of it, acquired a distinctive character in respect of the goods or services for which registration is requested.
Not registrable (relative grounds for exclusion): (a) a mark which is identical with an earlier trademark designating the same kind of goods or services; (b) a mark which is identical with, or similar to, an earlier trademark designating the same or similar kind of goods or services which would result in likelihood of confusion in trade, including the likelihood of association by the public of the sign applied for with the earlier trademark in accordance with this law; (c) a mark which infringes earlier acquired rights of the owner.
Association marks: can be protected.
Priority: date of filing of the application or in accordance with the Convention (fair or Union priority has to be claimed directly in the application).
Multi-class applications: possible.
Territory covered: the Republic of Croatia.
Filing requirements for an application (to be sent to resident agent):
1. Power of attorney, not legalized;
2. List of goods and services, according to the International Classification;
3. 2 representations of the sign applied for trademark protection (size: min. 1.5 x 1.5 cm, max. 8 x 8 cm);
4. If priority is claimed, it must be done in the application. The priority certificate has to be filed, including a certified translation thereof, within three months from the filing date of the application.
Electronic filing: possible.
Examination: the formal correctness and completeness of the application is examined first (the term for complying with the Office’s request to remedy the established deficiencies is within sixty days from the day of receipt of the request, extendible for justified reasons by not more than sixty days).
Publication: a trademark application complying with prescribed requirements shall be published in the Official Gazette.
Opposition to the published trademark application can be filed within three months after the publication by an interested party.
Refusal or partial acceptance of the trademark application: if the mark for which a trademark application is filed is excluded from protection in respect to all, or is partially excluded from protection in respect to some of the specified goods or services on absolute grounds, the Office shall issue a decision on the refusal or a decision on the partial acceptance of the application. The decision on the refusal or the partial acceptance of the trademark application shall not be issued if the applicant has not been previously notified in writing about the grounds for the exclusion.
Continuation of proceedings: applicants who have failed to perform a mandated action in the prescribed time frame, and have thereby suffered a loss of rights from their trademark application, or their trademark itself as a consequence, can apply for continuation of the proceedings within two months of finding out about the loss of rights from the trademark application or loss of the trademark itself.
Appeal: when a refusal or partial acceptance decision has been taken, as of June 1, 2008, an appeal can be filed with the Board of Appeals of the IP Office within thirty days from the receipt of the decision. A suit against the decision of the Board of Appeals can be filed with the Administrative Court.
Urgent registration: when a legal action has been brought for infringement of rights deriving from the application, the applicant can request that his application be examined out of turn.
Publication: granted trademark is published in the Official Gazette upon payment of a publication fee.
Correction of registration: errors can be corrected.
Amendment of application: it is not possible to make a major modification to the mark, or to add goods or services to the list.
Delivery of document: after entry of a trademark in the Register and after payment of the prescribed fee, the Office provides a trademark certificate not later than six months as from the date of publication of the granted trademark in the Official Gazette.
Beginning of protection: from the date of filing of the application.
Duration: ten years.
Renewal: every ten years for an unlimited period of time as long as the fees are paid.
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: exclusive right to use the registered trademark.
Obligation to use: the holder of the trademark has to use it. If he does not use it, without justified reason, for more than five years from the day of its inscription in the Register or from the day when it has been used last, the trademark can be cancelled at the request of any interested party.
Marking of registered goods: optional.
Text of Marking: not provided for.
Modification of the mark: not possible.
Changes in the list of goods: possible only if the list is restricted.
Licenses: license under written contract permitted.
Modification of Protection after Registration
Right of prior user: a prior user has the right to request (in court) the revocation of a registered trademark by proving prior use of the trademark involved, if such prior use is well-known on the market. Annulment is however not possible if the owner of such registered trademark proves his priority right to use the trademark. The right to raise a case against the owner lapses after a period of five years from the registration of the trademark.
Compulsory licenses: not provided for.
Expropriation: not provided for.
Nullification: the decision to register a trademark will be proclaimed null and void if it is established that the conditions for granting trademark rights did not exist (e.g. existence of an identical or similar trademark, or if the trademark was unsuitable for protection for any other reasons). A request can be submitted by any interested person or by the public prosecutor during the whole duration of the protection of the trademark to the Intellectual Property Office. The decision of the Office can be appealed before the Board of Appeals of the IP Office. A suit against the decision of the Board of Appeals can be filed at the State Court (possible as of June 1, 2008). Where a trademark has not been registered in accordance with the provisions stated above in Section 3 “Not registrable” (c) to (j), it may only be declared invalid if the procedure for a declaration that the trademark is invalid has been initiated within a period of ten years from the date of registration.
Validation of invalidated marks: possible.
Provisions 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.
Registration of invalidated marks: the right to register again an invalidated trademark belongs exclusively to the owner of the invalidated trademark; the request must be filed within two years from the day on which the validity of the trademark has expired.
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.
European Union Trademark (EUTM) Conversion
The filing requirements for the conversion of a registered EUTM or an EUTM application in Croatia are the same as for filing a national application. The request for conversion must include the indication of the number of the EUTM application/registration. The application/registration, list of goods and/or services, as well as any other documents relating to it, have to be translated into Croatian. Time limit: sixty days, non-extendible.