Act
And
NN 173/2003, in force from January 1, 2004
*NN 76/2007, in force July 31, 2007
**NN 30/2009, in force March 17, 2009
I. BASIC PROVISIONS | ABSOLUTE GROUNDS FOR REFUSAL | |
Article 5 | ||
SCOPE OF APPLICATION | (1) | The following shall not be registered: |
Article 1
This Act shall apply to individual, collective and guarantee trademarks which are the subject of a registration or an application for the registration of a trademark filed with the State Intellectual Property Office of the Republic of Croatia (hereinafter: "the Office"), or of an international registration having effect in the Republic of Croatia.
SIGNS WHICH CAN BE PROTECTED
AS TRADEMARKS
Article 2
Any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, three-dimensional forms, colors, as well as the combinations of all the above indicated signs, may be protected as a trademark, provided that such signs are capable of distinguishing the goods or services of one undertaking from goods or services of another undertaking.
PERSONS WHO MAY BE HOLDERS
OF A TRADEMARK
Article 3
(1) Any natural or legal person may be a holder of a registered trademark or an applicant for the registration of a trademark.
(2) Foreign legal and natural persons not having a principle place of business or a domicile or a habitual residence, respectively, in the Republic of Croatia shall, under this Act, enjoy the same rights as are enjoyed by the persons having a domicile or a real and effective industrial or commercial principle place of business in the Republic of Croatia, if it results from the international treaties binding the Republic of Croatia or from the application of the principle of reciprocity.
ACQUISITION OF A TRADEMARK
Article 4
(1) In the Republic of Croatia a trademark shall be acquired by registration.
(2) For the purposes of this Act, "registration" shall mean entry of a trademark in the trademark register kept by the Office.
1. signs, which may not be protected as trademarks in accordance with the requirements set out in Article 2 of this Act,
2. signs, which are devoid of distinctive character in relation to the goods or services for which registration is requested,
3. signs which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of providing of the service, or to designate other characteristics of the goods or services,
4. signs which consist exclusively of signs or indications which have become customary in the everyday language or in good faith and the established practices of trade,
5. signs which consist exclusively of the shape which results from the nature of the goods as such, or the shape of goods which is necessary to obtain a technical result, or the shape which gives substantial value to the goods,
6. signs, which are contrary to public policy or to accepted principles of morality,
7. signs which 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,
8. signs, 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".)
9. signs for wines which contain or consist of geographical indications identifying wines and signs for spirits which contain or consist of geographical indications identifying spirits with respect to such wines or spirits not having that geographical origin,
10. signs, which contain the name or abbreviation of the name, national coat of arms, emblem, flag or other official an earlier trademark and the registration has been requested for goods or services which are not similar to those for which the earlier trademark is registered, where the earlier trademark has a reputation in the Republic of Croatia and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier trademark;
sign of the Republic of Croatia, or a part thereof, and the imitation thereof, except with the authorization of the competent authority of the Republic of Croatia. | |||||
---|---|---|---|---|---|
(2) | Registration shall not be refused to signs specified in paragraph (1) items 2 to 4 of this Article, if the applicant for the registration of a trademark proves that the sign has, before the date of filing of the application for the 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. | (4) | |||
RELATIVE GROUNDS FOR REFUSAL | |||||
Article 6 | |||||
(1) | Upon an opposition as filed, a sign shall not be registered: 1. if it is identical with an earlier trademark | (5) | |||
registered for identical goods or services, | |||||
2. if because of its identity with, 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 | (6) | ||||
earlier trademark. | |||||
(2) | For the purposes of trademark" shall mean: | this | Act, | "earlier | |
1. trademarks registered in the Republic of Croatia, enjoying priority right referred to in Articles 17, 18 and 19 of this Act, | |||||
2. trademarks registered under international treaties, having effect in the Republic of Croatia, and enjoying priority right referred to in Articles 17, 18 and 19 of this Act, | (7) | ||||
3. applications for the registration of trademarks referred to in item 1 of this | |||||
paragraph, provided that the trademarks become registered, | |||||
4. trademarks which, on the date of application for the registration of a trademark, or, if priority is claimed, on the date of priority right claimed in the application, are well known in the Republic of Croatia, in the sense in which the words "well known" are used in | |||||
Article 6bis of the Paris Convention. | |||||
(3) | Upon opposition as filed by the holder of an earlier trademark, a sign shall not be registered if it is identical with, or similar to, |
Upon opposition as filed, a sign shall not be registered if its use would infringe one of the following earlier rights:
For the purposes of this Act, "earlier right" shall mean rights acquired on the date which is earlier than the date of application for the registration of a trademark, or, if priority right is claimed, as from the date of priority claimed in the application.
On the basis of opposition as filed, a sign shall not be registered if its use would infringe the right of the person who, at the time of filing of an application for the registration of a trademark, had a firm, provided that such firm or the essential part thereof is identical with or similar to the sign in respect of which the application is filed and provided that identical or similar goods or services are the subject matter of the firm’s activity, unless the applicant had the identical or similar firm at the time of filing the application for registration of a trademark.
On the basis of opposition as filed, a sign shall not be registered if it is identical with, or similar to, an earlier trademark which was registered for identical or similar goods or services and conferred on them a right which has expired for failure to renew the registration of the trademark within a period of not more than two years as from the expiry of the trademark, unless the holder of the earlier trademark gave his consent for the registration of the later trademark or did not use his trademark.
RIGHTS CONFERRED BY A TRADEMARK
Article 7
REPRODUCTION OF A TRADEMARK IN
DICTIONARIES
Article 8
If the reproduction of a trademark in a dictionary, encyclopedia or similar publications, including
those in electronic form, gives the impression that the trademark constitutes the generic name of the goods or services for which it is registered, the publisher of the work shall, on request of the holder of the trademark, ensure that the reproduction of the trademark is, at the latest in the next edition of the publication, accompanied by a note that it is a registered trademark.
PROHIBITION OF THE USE OF A TRADEMARK
REGISTERED IN THE NAME OF A TRADE
AGENT OR A REPRESENTATIVE
Article 9
Where a trademark is registered in the name of the trade agent or a representative of a holder of the trademark, without the holder's authorization, the holder shall be entitled to prohibit the use of this trademark by the agent or representative.
LIMITATION OF THE EFFECTS OF A
TRADEMARK
Article 10
EXHAUSTION OF THE RIGHTS
Article 11
(1) Exhaustion of the right to prohibit the use of a trademark in relation to goods or services shall start having effect by putting these goods or services on the market in the Republic of Croatia by the holder of the trademark or with his authorization.
LIMITATION OF RIGHTS IN
CONSEQUENCE OF ACQUIESCENCE
Article 12
USE OF A TRADEMARK
Article 13
1. use of the trademark in a form differing in elements which do not alter the distinctive character of the trademark in
respect of the form in which it was registered,
2. affixing of the trademark to goods or to the packaging thereof in the Republic of Croatia concerned solely for export purposes.
(2) and Article 51 paragraph (5) of this Act, unless there are justified reasons for non-use.
FILING OF AN APPLICATION
Article 14
REQUIREMENTS WITH WHICH AN
APPLICATION MUST COMPLY
Article 15
(3) Other elements of the application and the attachments thereto shall be filed in accordance with the Regulations on Trademarks (hereinafter: "the Regulations").
CLASSIFICATION
Article 16
The goods or services in relation to which an application for the registration of a trademark is filed shall be classified in conformity with the International Classification of Goods and Services established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
APPLICATION FILING PRIORITY
Article 17
UNION PRIORITY RIGHT
Article 18
Trade Organization not later than within three months from the date of filing a priority claim, and the translation of the first application into the Croatian language.
EXHIBITION PRIORITY RIGHT
Article 19
THE OFFICE AUTHORITY
Article 20
EXAMINATION OF THE CORRECTNESS
OF THE APPLICATION
Article 21
(1) The examination of the correctness of the application shall include the examination of compliance with all the requirements prescribed by this Act and the Regulations.
(2) The application for the registration of a trademark shall be correct:
REMEDYING THE DEFICIENCIES
OF THE APPLICATION
Article 22
REJECTION OF THE APPLICATION
Article 23
If the applicant for the registration of a trademark does not, within the prescribed time limit, comply with the invitation sent by the Office and does not remedy the found deficiencies within the meaning of Article 22 paragraphs (1) and (3) of this Act, the application shall be rejected by a decision.
REFUSAL OF THE REGISTRATION
OF A TRADEMARK
Article 24
PUBLICATION OF THE APPLICATION
Article 25
OPINIONS BY THIRD PARTIES
Article 26
(1) Following the publication of an application for the registration of a trademark, any natural or legal person and any group or body representing manufacturers, providers of services, traders or consumers, may submit to the Office, within a period of three months from the date of publication of the application for the registration of a trademark, their written opinions, explaining, in particular, the grounds referred to in Article 5 paragraph (1) of this Act.
OPPOSITION
Article 27
documentation supporting the justification of the grounds specified in the opposition.
(4) The opposition shall be filed under conditions and in the manner as prescribed by the Regulations.
OPPOSITION PROCEDURE
Article 28
EXAMINATION OF THE OPPOSITION
Article 29
earlier trademark who has filed the opposition to the registration shall furnish proof that, during the period of five years preceding the date of publication of the application, he has used the trademark in the Republic of Croatia within the meaning of Article 13 paragraphs (2), (3) and (4) of this Act, for the goods or services in respect of which it is registered and which he cites as justification for the opposition, or he shall furnish proof that there are justified reasons for non-use, provided that the earlier trademark has, on the date of publication of the application for the registration of the trademark, been registered for not less than five years.
WITHDRAWAL OF THE APPLICATION
AND RESTRICTION OF THE LIST OF GOODS
OR SERVICES
Article 30
AMENDMENTS OF THE APPLICATION
FOR THE REGISTRATION OF A TRADEMARK
Article 31
REGISTRATION OF THE TRADEMARK
Article 32
DIVISION OF THE APPLICATION
AND THE REGISTRATION
Article 33
(1) Any application or a registration of a trademark may be, on request of the applicant or the holder of the trademark, divided into two or several applications or registrations in respect of the list of the goods or services covered by the application or the registration.
(2) | The divisional applications or registrations shall maintain the priority right from the first application or the registration. | |
---|---|---|
(3) | The procedure of division of an application or a registration shall be prescribed by the Regulations. | (3) |
(4) | The data concerning divisional applications or registrations shall be entered in the register and published in the Office official gazette. |
PUBLICATION OF THE TRADEMARK
Article 34
(1) The data concerning a trademark shall be published in the Office official gazette not later than within three months from the date (1) of entry of the trademark in the register.
(2) The data to be published in the Office official gazette shall be prescribed by the Regulations.
TRADEMARK CERTIFICATE
Article 35
(1) On request of the holder of a trademark, and subject to the prior payment of the (2) prescribed procedural charges for the issuance of the trademark certificate, the Office shall issue the certificate to the holder
(3)
of the trademark not later than within three months from the date of publication of the trademark in the Office official gazette.
(2) The data to be contained in the trademark certificate shall be prescribed by the Regulations.
(1)
AMENDMENTS OF THE REGISTRATION
OF A TRADEMARK
Article 36
(1) On request of the holder of a trademark or
(2)
ex officio, amendments of the registration of a trademark can be made only in cases where it is necessary to correct the name or address of the holder of the trademark, and errors of wording or of copying, or to correct some other obvious mistakes, provided that such amendments do not require extension of the list of goods or services.
(3)
(2) The representation of a trademark shall not be altered during the period of registration or on renewal thereof, except where it includes the name and address of the holder. In that case, on request of the (4) holder, an alteration, not substantially
affecting the identity of the trademark as originally entered in the register, may be entered in the register.
Where the registration has already been published, the amendments of the registration shall be published in the Office official gazette later on, subject to the prior payment of the prescribed procedural charges.
VI. CHANGES RELATING
TO A TRADEMARK
ENTRY OF CHANGES
Article 37
On request of the applicant for the registration of a trademark or the holder of a trademark, the Office shall enter in the register all the changes occurring after the filing of the application for the registration of a trademark or after the registration of a trademark, provided that they correspond to the real situation and that they do not affect the representation of the registered trademark.
The changes entered in the trademark register shall be published in the Office official gazette.
The data to be contained in the request for the entry of any change relating to a trademark shall be prescribed by the Regulations.
TRANSFER OF RIGHTS
Article 38
The holder of a trademark may transfer his trademark to other persons in respect of some or all of the goods or services for which it is registered.
On request of one of the parties, the transfer of rights shall be entered in the register, if a certified copy of the transfer contract, or the certified part of the contract, or the original certificate of the transfer signed both by the former and the new holder of the right is submitted to the Office.
The transfer of rights shall be published in the Office official gazette and it shall have effect against third parties after the entry thereof in the register.
The request for the entry of the transfer of rights in the register shall be filed under the conditions and in the manner as prescribed by the Regulations.
LICENSE
Article 39
RIGHTS IN REM AND LEVY OF EXECUTION
Article 40
BANKRUPTCY PROCEEDINGS
Article 41
Where a trademark is involved in bankruptcy proceedings, on request of the competent authority an indication to that effect shall be entered in the register and published.
RIGHTS CONFERRED BY AN APPLICATION
Article 42
Articles 38 to 41 of this Act shall also apply to applications for the registration of a trademark.
PERIOD OF PROTECTION
Article 43
The period of protection of a registered trademark shall last ten years counting from the date of filing of the application for the registration of a trademark.
RENEWAL OF THE REGISTRATION
OF A TRADEMARK
Article 44
fee and procedural charges paid within the additional period of six months following the expiry of the period referred to in paragraph
(1) of this Article, in which case the amount of the prescribed fee and procedural charges shall be doubled.
SURRENDER OF THE TRADEMARK
Article 45
REVOCATION OF A TRADEMARK
Article 46
(1) The request for revocation of a trademark may be filed with the Office by any natural or legal person.
PROCEDURE CONCERNING THE REQUEST
FOR REFUSAL OF A TRADEMARK
Article 47
as filed, and shall send him a copy of the request, inviting him to submit his observations on the request within 60 days from the day of receipt of the invitation.
EXAMINATION OF THE REQUEST
FOR REVOCATION OF A TRADEMARK
Article 48
which began, at the earliest, on expiry of the continuous period of five years of non-use, shall be disregarded if preparations for the commencement or resumption occur only after the holder becomes aware that the request for revocation may be filed.
DECLARATION THAT THE
TRADEMARK IS INVALID
Article 49
1. within the meaning of Article 6 paragraphs (1) and (3) of this Act, on request of the holder of an earlier trademark and the licensee in accordance with Article 39 paragraph (4) or (5) of this Act,
2. on request of the holder of any of the rights referred to in Article 6 paragraph
(4) of this Act,
3. on request of the person who had a firm within the meaning of Article 6 paragraph
(6) of this Act,
4. on request of the holder of an earlier trademark referred to in Article 6 paragraph (7) of this Act.
PROCEDURE CONCERNING THE
REQUEST FOR A DECLARATION THAT
A TRADEMARK IS INVALID
Article 50
EXAMINATION OF THE REQUEST
FOR A DECLARATION THAT A
TRADEMARK IS INVALID
Article 51
parties to submit additional evidence, documentation and observations within 60 days from the day of receipt of the invitation.
PARTIAL REFUSAL OF REGISTRATION OF A
TRADEMARK, REVOCATION OF A
TRADEMARK
OR DECLARATION THAT A TRADEMARK IS
INVALID
Article 52
Where the grounds for refusal of the registration of a trademark or for revocation of a trademark or for a declaration that a trademark is invalid exist in respect of only some of the goods or services for which the trademark has been applied for or registered, refusal of the registration or revocation or the declaration that a trademark is invalid shall cover those goods or services only.
COLLECTIVE MARK
Article 53
Any sign within the meaning of Article 2 of this Act, which is indicated as such in the application for the registration of a trademark, and which is capable of distinguishing the goods or services of the members or partners of a certain legal person from the goods or services of other undertakings, and which is intended for collective designation of the goods or services put on the market by the members or the partners of that legal person, may be protected as a collective mark.
GUARANTEE MARK
Article 54
Any sign within the meaning of the Article 2 of this Act, which serves to designate the quality, origin, manner of production, or other common characteristics of the goods or services of the undertakings that are under the supervision of the holder of a trademark and use that trademark, may be protected as a guarantee mark.
SPECIAL PROVISIONS ON COLLECTIVE
MARKS AND GUARANTEE MARKS
Article 55
PERSONS WHO MAY BE HOLDERS
OF A COLLECTIVE MARK
Article 56
The holder of a collective mark or the applicant for the registration of a collective mark may be legal persons and associations of manufacturers, providers of services, or traders, which may, in their own name, assume obligations and exercise rights, make contracts or perform other legal actions.
CONTRACT ON A COLLECTIVE MARK
Article 57
A contract on a collective mark shall be filed with the application for the registration of a collective mark and shall contain: the list of names of the persons authorized to use the collective mark, the conditions of membership, the conditions governing such use and provisions relating to the infringement of rights in the case of misuse of the collective mark, or the breach of the provisions of the contract.
USE OF COLLECTIVE MARKS
Article 58
Any person who has been authorized to use a collective mark shall be entitled to use it, provided that all the requirements, which this Act prescribes with regard to the use of trademarks, are complied with.
AMENDMENTS OF THE CONTRACT
GOVERNING A COLLECTIVE MARK
Article 59
SPECIAL PROVISIONS ON INTERNATIONAL
REGISTRATIONS OF MARKS
Article 60
The provisions of this Act and the Regulations on Trademarks shall apply to international registrations of marks the protection of which extends to the territory of the Republic of Croatia under the Madrid Agreement Concerning the International Registration of Marks (hereinafter: "the Madrid Agreement") and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (hereinafter: "the Protocol"), in all the matters not regulated by these treaties, unless this part of the Act provides otherwise.
FILING OF THE APPLICATION FOR THE
INTERNATIONAL REGISTRATION OF A MARK
AND THE REQUEST FOR RECORDING OF A
CHANGE IN THE INTERNATIONAL REGISTER
Article 61
(5) If the applicant for the international registration of a mark or the person who filed the request for recording of a change in the International Register does not, within the prescribed time limit, comply with the invitation sent by the Office, and does not remedy the found deficiencies within the meaning of paragraph (2) of this Article, the application or the request shall be rejected by a decision.
FEES
Article 62
All the fees payable under the Madrid Agreement and the Protocol shall be paid directly to the International Bureau.
ENTRY IN THE TRADEMARK REGISTER
Article 63
The date and number of the international registration of a mark shall be entered in the trademark register kept by the Office, provided that the international application resulted in the registration.
REFUSAL OF PROTECTION TO THE
INTERNATIONAL REGISTRATION OF A MARK
Article 64
For the holder of an international registration of a mark the time limit laid down in Article 24 paragraph (2) of this Act shall be replaced by the time limit of four months as from the date of the notification of refusal.
OPPOSITION TO THE INTERNATIONAL
REGISTRATION OF A MARK
Article 65
the Office, in accordance with the Madrid Agreement or the Protocol, shall send to the holder of the international registration of a mark a notification of provisional refusal on the basis of the opposition and shall invite him to appoint a representative who shall, within four months from the date of the notification of refusal, file with the Office a power of attorney. A copy of the opposition shall be sent to the representative after filing of the power of attorney. The time limit for submitting the observations on the opposition is 60 days from the day of receipt of the copy of the opposition by the representative.
(4) The time limits referred to in paragraph (3) of this Article shall not be extended.
OPPOSITION AND THE PROCEDURE FOR A
DECLARATION THAT A TRADEMARK IS
INVALID ON THE BASIS OF AN
INTERNATIONAL REGISTRATION OF A MARK
Article 66
If, on the basis of an international registration of a mark, an opposition procedure or the procedure for a declaration that a trademark is invalid is initiated, for the purposes of proving the use of a mark, the date of the registration shall be considered to be the date on which the period according to Article 5 paragraph (2) of the Madrid Agreement or Article 5 paragraph (2) subparagraph (a) of the Protocol expired or, if the granting or opposition procedures have not yet been concluded on that date, the date of the notification concerning the final decision of the Office on the grant of protection, sent to the International Bureau.
DECLARATION THAT AN INTERNATIONAL
REGISTRATION OF A MARK IS INVALID
AND REVOCATION OF AN INTERNATIONAL
REGISTRATION OF A MARK
Article 67
(1) In the procedures concerning the request for a declaration that an international registration of a mark is invalid and the request for revocation of an international registration of a mark, the Office shall notify the holder of the international registration of a mark of the request and invite him to appoint a representative who, within 60 days from the date of receipt of the invitation, has to file with the Office a power of attorney.
OTHER REGULATIONS APPLIED IN
THE PROCEDURE BEFORE THE OFFICE
Article 68
The Act on the General Administrative Procedure shall apply to particular matters relating to the procedure, not regulated by this Act.
FEES AND PROCEDURAL CHARGES
Article 69
CERTIFICATE OF PRIORITY RIGHT
Article 70
On request of the applicant for the registration of a trademark or the holder of a trademark, and after the prescribed fee and procedural charges have been paid, the Office shall issue a certificate of priority right.
TRADEMARK REGISTER
Article 71
(1) The Office shall keep the trademark register, which contains the data, the entry of which is prescribed by this Act and the Regulations.
OFFICIAL GAZETTE
Article 72
The Office shall publish the official gazette containing all the data the publication of which is prescribed by this Act and the Regulations.
SEARCH
Article 73
On the request of any interested person, the Office shall carry out identity and similarity searches of applied for and registered trademarks having effect in the Republic of Croatia.
REPRESENTATION BEFORE THE OFFICE
Article 74
ACTION CONCERNING THE
INFRINGEMENT OF RIGHTS
Article 75
(1) The holder of a trademark, if his rights referred to in Article 7 of this Act have been infringed or threatened to be infringed, may, by instituting an action, require from the competent court:
REQUEST FOR THE DESTRUCTION
Article 76
LIMITATION OF ACTIONS
Article 77
The action concerning the infringement of a trademark may be brought within three years from learning about the infringement and the infringer, and not later than within five years as from the commitment of the infringement.
PROVISIONAL MEASURES
Article 78
(1) If the holder of a trademark makes it likely that his right has been infringed or that there is a likelihood of infringement which might cause the irreparable harm, he may require from the court:
1. ordering of the provisional measure comprising the prohibition of acts infringing the right of the holder of a trademark,
2. provisional seizure of the articles unlawfully designated by a trademark or the exclusion thereof from the circulation;
3. measures comprising the assurance of evidence concerning articles unlawfully designated by a trademark and measures comprising the preservation of the existing situation.
(2) The holder of a trademark may require the
ordering of provisional measures even
before the action is brought, provided that
he brings the action within a period of 20
working days or 31 calendar days,
whichever expires later.
(3) If the holder of a trademark does not bring an action within the time limit laid down in paragraph (2) of this Article, the court may, on the request of the defendant, conclude
the | procedure | and | lift | the | required |
measures. | |||||
(4) The | judicial | authorities | may | adopt |
provisional measures without hearing the other party where appropriate, in particular, if any delay is likely to cause irreparable harm to the holder of a trademark, or if there is a demonstrable risk of evidence being destroyed.
COMPENSATION FOR DAMAGE
Article 79
(1) The court may impose on the holder of a trademark the compensation for damage if it is proved that the required measures referred to in Article 78 (1) of this Act have been unjustified.
(2) The court may impose on the holder of a trademark the deposit of an adequate amount as a security for the person the provisional measure has been ordered against.
XII. PROVISIONS CONCERNING MISDEMEANOURS
Article 80
(1) Any legal person who uses somebody else’s trademark, reproduces it or imitates, affixes it to the goods or the packaging thereof, offers the goods under somebody else’s trademark, puts them on the market or stocks them for these purposes under somebody else’s trademark, imports or exports the goods under somebody else’s
trademark, uses somebody else’s trademark when providing services or on business papers and in advertising, without the authorization, shall be punished for the misdemeanor by a fine amounting from HRK 20,000.00 up to 100,000.00 (Article 7).
(2) The natural person shall be punished for a misdemeanor referred to in paragraph (1) of this Article by a fine amounting from HRK 2.000,00 up to 8.000,00.
(3) The responsible person in the legal person shall be punished for a misdemeanor referred to in paragraph (1) of this Article, by a fine amounting from HRK 5,000.00 up to 10,000.00 .
(4) Articles intended or used for the committed misdemeanors referred to in paragraphs (1),
(2) and (3) of this Article shall be seized, and the court shall decide whether the objects unlawfully designated by a trademark are to be destroyed, made unrecognizable or used in any other way.
XIII. TRANSITIONAL AND FINAL PROVISIONS
PENDING PROCEDURES CONCERNING
APPLICATIONS FOR REGISTRATION
OF A TRADEMARK
Article 81
Procedures concerning trademark applications, as filed before the day the application of this Act starts, which are pending on the day the application of this Act starts, shall be carried out in compliance with the provisions of this Act.
OTHER PENDING PROCEDURES
Article 82
(1) The procedures concerning the infringement of a trademark or the rights conferred by an application for the registration of a trademark which are pending on the day the application of this Act starts, shall be carried out in compliance with the provisions which were in force up to the day the application of this Act starts.
(2) The procedures concerning the declaration of the decision on the grant of a trademark null and void and the procedures concerning requests for ceasing of the effect of a trademark due to non-use which are pending on the day the application of this Act starts, shall be carried out in compliance with the provisions which were in force up to the day the application of this Act starts.
IMPLEMENTING REGULATION
Article 83
The matters referred to in: Article 15 paragraph (3); Article 21 paragraph (1); Article 25 paragraph (2); Article 27 paragraph (4); Article 33 paragraph (3); Article 34 paragraph (2); Article 35 paragraph (2); Article 37 paragraph (3); Article 38 paragraph (4); Article 39 paragraph (8); Article 40 paragraph (4); Article 44 paragraph (8); Article 46 paragraph (4); Article 49 paragraph (8); Article 61 paragraph (1); Article 71 paragraph (1) and Article 72 of this Act shall be regulated by the Minister competent for the work of the Office in the Regulations, to be enacted by him upon a proposal of the Director General of the Office up to the day the application of this Act starts.
ABILITY CEASING OF THE VALIDITY
OF OTHER PROVISIONS
Article 84
On the day application of this Act starts, the provisions of the Law on Trademarks (Official Gazette No 78/99, 127/99) shall cease to be valid, except for the provisions concerning the representation (Article 59), which shall be applied up to the enactment of a special regulation.
ENTRY INTO FORCE
Article 85
This Act shall enter into force on the eighth day from the date of its publication in the Official Gazette of the Republic of Croatia, and shall be applied as from January 1, 2004.
THE ACT ON AMENDMENTS TO THE The former paragraphs (6), (7) and (8) become paragraphs (4), (5) and (6).
TRADEMARKS ACT
Article 4
Article 1
In the Trademarks Act (Official Gazette 173/2003), Article 11 is amended to read: “(1) The placing on the market in the territory of the Republic of Croatia, or, after the accession of the Republic of Croatia into the full membership of the European Union, in the territory of any of the States of the European Union, or States Parties to the Agreement Creating the European Economic Area, of a product designated by a trademark, by the holder of the trademark, or with his express authorization, shall exhaust for the territory of the Republic of Croatia, the exclusive rights conferred by the trademark in respect to such a product, unless there are justified reasons for the holder of the trademark to retain the exclusive rights conferred by the trademark.”
(2) The justified reasons for the holder of the trademark to oppose further commercialization of the product shall exist, especially where the condition of the product is changed or impaired after it has been put on the market.”
Article 2
Article 20 is amended to read: “(1) The Office shall carry out the administrative procedures for the registration of a trademark, procedures for the declaration that a trademark is invalid, and shall perform other administrative and professional tasks concerning the protection of trademarks.
Article 3
In Article 39, paragraphs (4) and (5) are deleted.
In Article 40, paragraph (2) is amended to read: “(2) A right in rem shall be entered in the register upon the request of a lien creditor or a lien debtor. The court levying an execution ex officio shall inform the Office without delay of the execution levied upon a trademark for the purpose of the entry of the levy of execution in the register.”
Article 5
In Article 49, paragraph (1) is deleted.
The former paragraphs (2), (3), (4), (5), (6), (7)
and (8) become paragraphs (1), (2), (3), (4), (5),
(6) and (7).
Article 6
After Article 67 a new “Part Ten”: “COMMUNITY TRADEMARK“, as well as headings and Articles 67a to 67i are added to read:
“DEFINITIONS”
Article 67a For the purpose of this Act, the following terms mean:
EXTENSION OF EFFECTS OF A COMMUNITY
TRADE MARK
Article 67b The effects of applications for a Community trade mark filed and Community trade marks acquired before the day of the acceptance of the Republic of Croatia into the full membership of the European Union shall extend to the territory of the Republic of Croatia.
A COMMUNITY TRADE MARK AS AN EARLIER
TRADEMARK
Article 67c
FORWARDING OF AN APPLICATION FOR A
COMMUNITY TRADE MARK
Article 67d If an application for a Community trade mark has been filed with the Office pursuant to Article 25 of the Regulation on the Community trade mark, a fee and charges for forwarding shall be paid in accordance with special regulations.
CONVERSION OF THE APPLICATION FOR A
COMMUNITY TRADE MARK INTO A NATIONAL
APPLICATION FOR A TRADEMARK
Article 67e
SENIORITY
Article 67f The seniority of a national trademark, within the meaning of Articles 34 and 35 of the Regulation on the Community trade mark, may be claimed for a Community trade mark:
PROHIBITION OF USE OF A COMMUNITY TRADE
MARK
Article 67g
prove existence of any of these grounds in relation to the Community trade mark. PROTECTION OF A COMMUNITY TRADE MARK AGAINST INFRINGEMENT
Article 67h The provisions on the protection a national trademark in the case of infringement shall apply mutatis mutandis to the protection of a Community trade mark in the case of infringement.
THE COURT COMPETENT FOR A COMMUNITY
TRADE MARK
Article 67i
Article 7
After Article 74, a new „Part Twelve“: „APPEAL“ as well as headings and Articles 74a to 74d are inserted to read:
“RIGHT OF APPEAL” Article 74a
CONTENT OF AN APPEAL
Article 74b In addition to the indications, which shall be contained in any communication, an appeal shall contain:
DECISIONS ON AN APPEAL
Article 74c
BOARDS OF APPEAL
Article 74d
Article 8
The former “Part Eleven” becomes “Part Thirteen”
A heading above Article 75 is amended to read:
“PERSONS ENTITLED TO CLAIM THE PROTECTION
OF RIGHTS”
Article 75 is amended to read:
“The protection of the rights under this Act may be claimed by a right holder, or a person authorized by her/him pursuant to the general provisions on representation, and, apart from her/him by the holder of the exclusive license, to the extent that he has acquired the right of exploitation of a trademark on the basis of a legal transaction or law.”
Article 9
A heading above Article 76 is amended to read:
“CLAIM FOR THE ESTABLISHMENT AND
TERMINATION OF INFRINGEMENT”
Article 76 is amended to read:
infringed, claiming desistance from the act concerned and prohibition of the infringement of the trademark.
(4) The claims referred to in paragraphs (1), (2) and (3) of this Article may also be made against a person who in the course of her/his economic activities renders services used in the acts infringing a trademark or threatening to infringe it.”
Article 10
A heading above Article 77 is amended to read: “CLAIM FOR SEIZURE AND DESTRUCTION OF OBJECTS” Article 77 is amended to read: “(1) The holder of a trademark may institute a legal action against any person who has infringed a trademark by performing without authorization any of the acts referred to in Article 7, paragraphs
Article 11
A heading above Article 78 is amended to read: ““CLAIM FOR DAMAGES, USUAL COMPENSATION AND UNFAIR PROFITS” Article 78 is amended to read: “(1) The holder of a trademark may take a legal action against any person who has caused him damage by performing without authorization any of the acts referred to in Article 7, paragraphs (2) and (3) of this Act, claiming damages pursuant to the general rules on the legal redress laid down in the Obligations Act.
any legal transaction, court decision or the law, and has benefited from it, claiming the recovery or compensation of such benefits pursuant to the general rules on unjust enrichment laid down in the Obligations Act.
(4) The claims referred to in paragraphs (1), (2) and (3) shall not be mutually excluding. When deciding on the claims referred to in paragraphs (1), (2) or (3), filed cumulatively, the court shall observe the general principles laid down in the Obligations Act.”
Article 12
A heading above Article 79 is amended to read: “CLAIM FOR PUBLICATION OF THE JUDGEMENT” Article 79 is amended to read: “The holder of a trademark may claim that the final judgment even partially upholding the claim for protection of the trademark in the case of infringement is published in the means of public communication at the expense of the defendant. The court shall decide, within the limits of the claim, on the means of public communication in which the judgment shall be published, and whether it shall be published entirely or partially. If the court decides that only a part of the judgment shall be published, it shall order, within the limits of the claim, that at least the dispositive part of it and, if necessary, the part of the judgment specifying the infringement concerned and the person, having committed it, is published.”
Article 13
After Article 79, headings and Articles 79a to 79e are inserted to read: “CLAIM FOR PROVISION OF INFORMATION Article 79a
-persons who provide, within their economic activities, services used in the activities suspected of infringing a trademark;
-a person who is indicated by any of the mentioned persons as being involved in the manufacture or distribution of the goods or the provision of the services suspected of infringing a trademark;
- order the seizure or removal from the market of the goods unlawfully designated by a trademark.
PROVISIONAL MEASURES COMPRISING THE
PRESERVATION OF EVIDENCE
Article 79c
- preparation of a detailed description of the goods made likely to infringe a trademark, with or without taking of samples;
-seizure of the goods made likely to infringe a trademark;
- seizure of the materials and implements used in the production and distribution of the goods made likely to infringe a trademark and the documentation relating thereto.
scale for the purpose of acquiring commercial or economic benefit, and has make it likely during the proceedings, and where he invokes in the proceedings banking, financial or similar economic documents, papers or the like evidence, claiming that they lie with the opposing party or under its control, the court shall invite the opposing party to present such evidence within a specified time limit.
Article 14
The former “Part Twelve” becomes “Part Fourteen”. In Article 80, paragraph (1) is amended to read: “Any legal person who uses a sign which is identical with or similar to somebody else’s trademark, reproduces it or imitates, affixes it to the goods or the packaging thereof, offers the goods designated by such a sign, puts them on the market or stocks them for such purposes, imports or exports the goods designated by such a sign, uses such a sign when providing services or on business papers and in advertising, without authorization, shall be punished for the misdemeanor by a fine amounting from HRK 20
000.00 up to 100 000.00 (Article 7 paragraph (2)
items 1 and 2).”
In paragraph (2) number “8,000.00” is replaced by
number “10 000.00”.
After paragraph (3), paragraph (4) is added to
read:
“(4) A natural person – a craftsman or other self-
employed person, respectively, shall be punished
for the misdemeanor, referred to in paragraph (1)
of this Article, by a fine amounting from HRK 5
000.00 to 50 000.00, where the misdemeanor has
been committed in the performance of her/his
activities as a craftsman or other self-employed
person, respectively.”
In the former paragraph (4), which becomes
paragraph (5), numbers “1, 2 and 3” are replaced
by numbers “1, 2, 3 and 4”.
TRANSITIONAL AND FINAL PROVISIONS
Article 15
(1) The administrative disputes instituted before the Administrative Court before 1 June 2008 shall be completed before the Administrative Court in accordance with the provisions, which were in force up to that date.
(2) A party, which instituted a legal action before the Administrative Court before 1 June 2008, in accordance with the provisions which were in force up to that date, may require from the Administrative Court to stay the proceedings, provided that it has filed within 30 days from that date an appeal based on the same grounds and with the same statement of reasons as are those contained in the legal action, where an appeal against such administrative decision is admissible pursuant to the provisions of this Act. The administrative decision issued on such appeal in the second instance, may be subject to an administrative dispute pursuant to the provisions of the Act on Administrative Disputes.”
Article 16
The procedures concerning the protection of a trademark in the case of infringement, pending on the date of the entry into force of this Act, shall be completed in accordance with the provisions, which were in force before the entry into force of this Act.
Article 17
The Ordinance referred to in Article 83 of the Trademarks Act (Official Gazette 173/2003) shall be shall be aligned with the provisions of this Act, on a proposal given by the Director General of the Office, by the Minister responsible for the work of the Office, not later than within 3 months from the entry into force of this Act.
Article 18
This Act shall enter into force on the eight day following the day of its publication in the Official Gazette, with the exception of Articles 2 and 7 thereof, which shall enter into force on 1 June 2008, and Article 6, which shall enter into on the day of the acceptance of the Republic of Croatia into the European Union.
Article 1
In the Trademarks Act (OG 173/03 and 76/07) in Article 5 paragraph (1) item 2 after the words “are devoid of” the word “any” is added.
Item 11 is added to read: “11. signs which 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 which refer to the same type of products and services”.
Article 2
In Article 6, paragraph (8) is added to read: “(8) Upon an opposition as filed, a sign shall not be registered in the name of a trade agent or representative of a trademark holder without his authorisation, unless a trade agent or representative justifies his action”.
Article 3
In Article 25, paragraph (1) is amended to read: “(1) If all the requirements set out in Article 21, paragraph (2) of this Act are complied with, and if there are no grounds for refusal of the registration under Article 5, paragraph (1) of this Act, the application data shall be published in “The Croatian Intellectual Property Gazette “ (hereinafter: the Office official gazette)”.
Article 4
In Article 27, paragraph (1), item 5 is added to
read:
“5. the holder of an earlier trademark within the
meaning of Article 6, paragraph (8) of this Act”.
Article 5
In Article 35, paragraph (1), the words: “not later than within three months from the date of publication of the trademark”, are replaced by the words: “after the publication of a registered trademark”.
Article 6
After Article 36, a new heading and Article 36a are added to read:
“CONTINUED PROCESSING
Article 36a
6. for all the acts in the procedures before the Office involving several parties.
(5) If the Office complies with the requirement referred to in paragraph (1) of this Article, the consequences of having failed to comply with a time limit shall be deemed not to have occurred, and all the decisions and conclusions issued by the Office concerning the failure shall be revoked.
Article 7
In Article 38, a new paragraph (2) is added to read:
“(2) In case of a trademark transfer in respect of some of the products and/or services only, for which the trademark is registered, such registration shall be divided in accordance with the provisions of Article 33 of this Act”.
The former paragraphs (2), (3) and (4) become paragraphs (3), (4) and (5).
Article 8
In Article 49, paragraph (2), item 4, after the
words: “of the Act” a full stop is replaced by a
comma, and item 5 is added to read:
“5. on request of the holder of the earlier
trademark referred to in Article 6, paragraph (8) of
this Act”.
After paragraph (2), a new paragraph (3) is added
to read:
“(3) The procedure for a declaration that a
trademark is invalid may be initiated on the request
of an interested person also in the case where the
holder of the trademark, requested to be declared
invalid was acting in bad faith at the moment of
filing an application for the registration of such
trademark.
The former paragraphs (3) and (4) become
paragraphs (4) and (5).
In the former paragraph (5), which becomes
paragraph (6), number “3” is replaced by number
“2”.
The former paragraphs (6) and (7), become
paragraphs (7) and (8).
Article 9
In Article 50, paragraph (1), numbers “3, 4, 5, 6 and 8” are replaced by numbers: 2, 3, 4, 5, 6 and 8”.
Article 10
In Article 51, paragraph (4), the words: ”paragraph (3)” are replaced by the words: “paragraphs (2) and (3)”.
Article 11
Article 54 is amended to read: “Any sign within the meaning of Article 2 of this Act, which is intended to designate the quality, origin, manner of production, or other common characteristics of the goods or services may be protected as a guarantee mark. The holder of a guarantee mark is not entitled to use a guarantee mark by himself, however, he shall be entitled to authorize and supervise such use in respect of entrepreneurs who have the authorization to use a guarantee mark pursuant to the Contract on a Guarantee Mark”.
Article 12
After Article 63, a new heading and Article 63a are added to read:
“CONVERSION (TRANSFORMATION) OF AN INTERNATIONAL REGISTATION OF A MARK INTO A NATIONAL TRADEMARK APPLICATION
Article 63a
(4) The date of the international trademark registration for which the extension of protection to the territory of the Republic of Croatia is requested, shall be taken as the date of the national trademark application referred to in paragraph (3) of this Article, resulting from a request for conversion (transformation)”.
Article 13
The heading above Article 66 is amended to read: “PROVING THE USE OF AN INTERNATIONAL REGISTRATION OF A MARK”
Article 66 is amended to read: “(1) For the purpose of proving the use of an international registration of a mark in the opposition procedure, procedure for the declaration that a trademark is invalid, and the revocation procedure relating to an international registration of a mark, the date of the expiry of a one-year period running from the day following the date of notification communicated by the International Bureau concerning the request for the extension of protection of the international registration of a mark to the territory of the Republic of Croatia, shall be taken as the date of the international trademark registration.
(2) If, upon the expiry of a one-year period referred to in paragraph (1) of this Article, the procedure concerning a request for the extension of protection of an international registration of a trademark to the territory of the Republic of Croatia has not yet been concluded the date on which the Office notified the International Bureau its final decision on the grant of protection, shall be taken as the date of the international registration”.
Article 14
In Article 67, paragraph (5) is deleted.
Article 15
In Article 67c, paragraph (1), the words: “a Community trademark shall be an earlier trademark” are replaced by the words: “an application for a Community trademark and a Community trademark shall be earlier trademarks”
Article 16
The heading above Article 67e is amended to read: “CONVERSION OF A COMMUNITY TRADEMARK APPLICATION AND A COMMUNITY TRADEMARK INTO A NATIONAL TRADEMARK APPLICATION”.
Article 67e is amended to read:
“(1) Upon a request for conversion of a Community trademark application, or a Community trademark, respectively, into a national trademark application, filed pursuant to the provision of Article 109, paragraph (3) of the Regulation on the Community trade mark, the Office shall carry out the procedure for the trademark registration in accordance with the provisions of this Act.
Article 17
In Article 67g, paragraph (2) is deleted.
Article 18
This Act shall enter into force on the eighth day following day of the publication thereof in the “Official Gazette”.