Trademark protection in the Republic of Croatia is regulated by the Trademark Act (OG 14/19; hereinafter: the Act). This Act regulates the system of trademark protection against trademark infringements in the Republic of Croatia which are the subject of registration or application for registration with the State Intellectual Property Office (hereinafter: the Office) of individual, warranty or joint trademark for certain products and services, or are subject to registration or applications for registration of such a trademark that has effect in the Republic of Croatia. The Ordinance on Trademarks (OG 38/2019; hereinafter: the Ordinance) regulates the details of proceedings in front of the Office, and for which the Law on Trademarks stipulates that they are prescribed by the Ordinance. In the continuation of this article, we will emphasize how to register a trademark.
Trademark protection – meaning of a trademark
A trademark is a protected mark of a legal or physical entity who has the exclusive right to place on the market products marked with a trademark or to use a trademark in the performance of services. A trademark may consist of any signs, words, including personal names, drawings, letters, numbers, colors, shapes of products or packaging of products, or sounds, under condition that such signs are appropriate to distinguish the products or services of a company from products or services of other companies, and that they are suitable for display in the register in a way that enables the competent authorities and the public to determine the exact and clear subject-matter of the protection afforded to the trademark proprietor.
It is important to note that a trademark is a mark protected by it, as well as the products or services to which the trademark refers, so the above phrase also represents the basic principle of trademark law, known as the principle of unity of the trademark. On the other hand, according to the principle of specialty, a mark protected by a trademark covers only certain products or services for which it is protected. The exceptions are the so-called famous trademarks that have a dominant position in the market, because they achieve a very high degree of marking power, thus declaring themselves as a recognizable mark of a company or a particular product.
Trademark protection in Croatia – acquisition of a trademark
In the Republic of Croatia, a trademark protection is acquired by registration in an administrative procedure conducted by the State Intellectual Property Office, and by registering the trademark, the holder of the trademark is granted the exclusive right arising from it. The rights deriving from the trademark protection have effect against third parties from the date of publication of the trademark registration. The usual duration of the entire trademark registration procedure is 12 months. Each sign you wish to protect with a trademark is applied to the registration procedure in a separate application, of which the list of products or services to which the mark relates is an integral part, and which must be compiled in accordance with the International Classification of Goods and Services for Trademark Registration.
Before filing an application, it is useful to search the database of registered trademarks in the Republic of Croatia in order to determine whether identical or similar trademarks already exist, all in order to avoid unnecessary costs or disputes. Consequently, it will not be possible to register characters that cannot be graphically displayed, that have no distinctive character, that are common in everyday speech, that serve to describe certain properties (types, quantities, qualities, etc.) or are misleading.
Trademark protection – what to do before registration application of a trademark
In the registration procedure, when examining a trademark protection application by an authorized body in which the possible existence of earlier rights is not examined ex officio, the holders of earlier rights may file an objection, thus preventing the registration of the trademark. In the case of a justified negotiation, a mark similar to an earlier trademark or in conflict with another earlier right will not be registered. Timely knowledge of possible obstacles to the recognition of a trademark or conflict in the market also enables timely taking of appropriate legal actions or business moves. Search services in relation to existing trademarks are provided by the Office for a fee. Databases with data from the Register of the Institute are available free of charge, in case you want and know how to use them independently.
Trademark protection in Croatia– proceedings in front of the State Intellectual Property Office
By registering a trademark, you reduce the possibility of violation of other people’s rights, and you get an effective tool for protecting your own rights. The decision about the elements of your market identity that you want to protect with a trademark comes from the overall business strategy by which you individualize the product and make it recognizable and different from others. The list of products and or services mentioned in the application cannot be subsequently expanded, and it must be carefully compiled, since the list determines the scope of protection with the trademark in question. The trademark protection application is submitted to the State Intellectual Property Office on Form Ž-1, with proof of payment of the prescribed administrative fee and reimbursement of examination costs.
The conditions of protection and the procedure of trademark registration in the Republic of Croatia are prescribed by the Trademark Act and the Trademark Ordinance. The application for trademark registration in Croatia can also be submitted via the Internet using the service of the State Intellectual Property Office e-Application, whereby in addition to the efficient application procedure, you also reduce its costs.
Trademark protection in Croatia– duration of protection
The period of protection of a registered trademark lasts ten years, counting from the date of filing the application for registration of the trademark, and the registration itself can be extended for an unlimited number of times. The registration of a trademark is extended at the request of the trademark holder or a person authorized to do so on the basis of regulations or contracts, provided that during the last year of the ten-year protection period there is obligation to pay to the Institute a prescribed administrative fee and reimbursement of costs.
The stated deadline is important due to the criminal protection of the trademark in terms of the time of the commission of the criminal offense under Art. 285 of the Criminal Code (OG 125/11, 144/12, 56/15, 61/15, 101/17, 118/18, 126/19), because the holder of the right to a trademark during that time acquires a monopoly over the registered mark, i.e. exclusive right on the basis of which it may prevent third parties from using it in commercial transactions on the territory of the Republic of Croatia without its approval with an identical mark for the same type of product, but also with an identical or similar mark for the same or similar products or services.
Trademark protection – use of a trademark and consequences of non-use
According to the Law, the trademark owner has the right to use his trademark in relation to the products or services for which it is registered. If the reference to the rights or maintenance of the rights from the registered trademark depends on the use of the trademark, such trademark must be in actual use by the trademark holder in the territory of the Republic of Croatia, unless there are justified reasons for non-use. The use of a trademark is considered to be the use of a trademark in a form that differs in elements that do not change the distinctive character of the trademark in relation to the form in which it is registered, regardless of whether the trademark in the form in which it is used is also registered and any marking of the products or their packaging solely for export purposes. Also, the use of a trademark with the consent of the holder is considered to be use by the holder.
On the other hand, non-use will be in question if within five years from the date of completion of the registration procedure the holder has not actually used the trademark in the Republic of Croatia in relation to the products or services for which it is registered or if such use is suspended for an uninterrupted period of five years.
Trademark protection in Croatia – infringement of a trademark
Infringement of a trademark is a synonym for unauthorized use, or any use of the same or similar sign in trade to denote the same or similar products or services by a third party, for which there is no approval or permission of the trademark holder. A trademark is a private right of its holder, and therefore the responsibility to maintain the value of the trademark, and to monitor possible infringements on the market, and to take appropriate legal action to prevent infringement is the obligation of the trademark owner himself. The case law is left to set criteria for determining certain elements of infringement of the right to a trademark, assessing all relevant circumstances of a particular case from the point of view of the average consumer.
If you would like to register your trademark in Croatia, do not hesitate to contact our office.
