TRADEMARK
REGULATIONS
NN 117/2007, in force from November 14, 2007
*NN 66/2011, in force from June 15, 2011
Zagreb, May 2013
TRADEMARK REGULATIONS
I. BASIC PROVISIONS
Scope of Application
Article 1
The Trademark Regulations (hereinafter: the Regulations) shall define in more details certain matters contained in the Trademark Act (hereinafter: the Act) related to the procedures carried out before the Office.
II. APPLICATION FOR REGISTRATION OF A TRADEMARK
Contents of the Application
Article 2
(1) An application for registration of a trademark shall contain:
1. a request for the registration of a trademark;
2. the name and address of the applicant, in accordance with Article 32 of these Regulations;
3. the name and address of the attorney, in accordance with Article 32 of these Regulations, if the applicant has an attorney;
4. indication of the classes of the goods or services for which registration is requested, in accordance with Article 10 paragraph 1 of these Regulations;
5. indications concerning the priority claim, in accordance with Articles 18 and 19 of the Act, if the priority is claimed;
6. a representation of the sign of which the registration is requested, in accordance with Articles 3 to 8 of these Regulations;
7. an indication that the registration of the verbal sign is requested, in accordance with Article 3 of these Regulations, if the registration of the verbal sign is requested;
8. an indication that the registration of the figurative sign is requested, in accordance with Article 4 of these Regulations, if the registration of the figurative sign is requested;
9. an indication that the registration of the three- dimensional sign is requested, in accordance with Article 5 of these Regulations, if the registration of the three-dimensional sign is requested;
10. an indication that the registration of the sign consisted of one colour or a combination of colours is requested, in accordance with Article
6 of these Regulations, if the registration of the sign consisting of one colour or a combination of colours is requested;
11. an indication that the registration of other type of a sign is requested, in accordance with Article 7 of these Regulations and which, if the registration of other type of a sign is requested;
12. an indication that the registration of the sign in colour is requested and the names of the colours claimed as distinctive features of the sign, if the registration of the sign in colour is requested;
13. a transliteration of the sign, if the sign contains elements written in characters other than Latin characters or numerals other than Arabic or Roman numerals;
14. an indication that the registration of the collective trademark is requested, if the registration of the collective trademark is requested;
15. an indication that the registration of the guarantee trademark is requested, if the registration of the guarantee trademark is requested;
16. the signature or the seal of the applicant, or the signature or the seal of his attorney.
(2) Indications referred to in paragraph 1 of this Article shall be specified on the form which forms part of these Regulations (Ž-1 form), or on the form corresponding to the contents of the Ž-1 form.
(3) The form referred to in paragraph 2 of this Article shall also be accompanied by:
1. the list of goods or services for which the registration is requested, in accordance with Article 10 of these Regulations;
2. evidence of the priority right, in accordance with Article 18 paragraph 2 or Article 19 paragraph 2 of the Act, if the priority is claimed;
3. a contract on a collective or guarantee trademark, in accordance with Article 57 of the Act, if the registration of the collective or guarantee trademark is requested;
4. the evidence of the payment of the prescribed fee and procedural charges.
(4) A description of a sign and its translation in the Croatian language may also be indicated in the application for registration of a trademark.
Verbal signs
Article 3
(1) If the application requests registration of a sign that consists only of letters, numerals, punctuation marks and other special signs that are standard key of the Qwerty keyboard or their combinations and the sign that is not in any
special graphic presentation or colour, the sign shall be considered to be a verbal sign.
(2) A verbal sign shall be machine typed or printed on the application form within the square provided for that purpose.
(3) The verbal sign shall be represented in standard characters used by the Office in all written documents, electronic data bases and in „Hrvatski glasnik intelektualnog vlasništva“ – „The Croatian Intellectual Property Gazette“ (hereinafter: „the Office official gazette“).
Figurative signs
Article 4
(1) If the application requests registration of a sign which consists of a certain visual expression, and it is not stated that the registration is requested for any other type of signs in accordance with Articles 3, 5, 6 or 7 of these Regulations, the sign shall be considered to be a figurative sign.
(2) A figurative sign shall be represented on the application form within the square provided for that purpose.
(3) If the registration of a sign in colour is requested, the application shall contain a representation of the sign in colour. If the registration of a sign in colour is not requested, the sign shall be depicted in black and white in all documents, electronic data bases and in the official gazette of the Office.
(4) In the entry in the trademark register kept by the Office, in the publication, in a decision on the registration of a trademark and in a trademark certificate, the sign in colour shall be reproduced in the best technique available to the Office; in the case of any disputes concerning the nuances and the shades of the colours in which the sign is reproduced, the representation of the sign shall be determined according to the original representation of the sign on the application form.
(5) As regards the correct position of the sign in the space provided for that purpose on the form, the correct position shall be determined according to the position of the sign on the application form.
Three dimensional signs
Article 5
(1) A three-dimensional sign shall be represented on the application form within the square provided for that purpose.
(2) If the registration of a three-dimensional sign is requested, the application shall be accompanied by a photograph or a drawing of a representation of a sign; the application may be accompanied by up to six different views of a representation of a sign from different perspectives.
(3) The representation of a three-dimensional sign shall clearly show its three-dimensional character.
(4) Where a three-dimensional sign is represented by a drawing, the reproduction shall be executed in uniformly black and clearly defined lines without blurs. The drawing may contain hatchings and shadings to represent three-dimensional details.
Signs Consisted of One Colour or of a Combination of Colours
Article 6
(1) If the application requests the registration of a sign consisted of one colour or of a combination of colours, the colours shall be listed and described in the application along with the relevant colour mark from the internationally recognized system of colour identification.
(2) If the application requests the registration of a sign consisted of a combination of colours, the reproduction must also contain a systematic order of colours in accordance with the previously determined and identical manner.
Other types of signs
Article 7
(1) If the application requests the registration of another type of a sign, the application shall state the type of the sign.
(2) Depending on the type of the sign for which the registration is requested by the application, the application shall be accompanied by a graphical representation of a sign, which is clear, precise, self-contained, easily available, durable and objective.
Other Requirements Relating to the Reproduction of a Sign
Article 8
(1) The reproduction of the sign shall be of such quality, form and colours that enable the elements of the sign to be clearly distinguished in all their details. The representation of the sign shall not be pasted over and shall be free from deletions and over colouring.
(2) The representation of the sign shall fit within the square provided for that purpose on the application form (square of 8 x 8 cm) and the distance between the two points of the sign farthest from each other (vertically, horizontally, and in diameter) shall not be less than 1.5 cm.
Attachments with the application
Article 9
The application shall not be accompanied by neither samples nor objects on or in which the signs for which registration is requested would be present. Objects so submitted shall be returned to the applicant, and in case that their return would not be possible, they shall be destroyed at the expense of the applicant, prior to
the publication of the application for the trademark registration.
The List of Goods or Services
Article 10
(1) The goods or services shall be precisely indicated and grouped in conformity with the classes of 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 (hereinafter: the Nice Classification). The number of the class of the Nice Classification shall precede each class. Whenever possible, the terms and expressions appearing in the Alphabetical List of Goods and Services of the Nice Classification should be used.
(2) The classification of goods or services shall serve exclusively administrative purposes and certain goods or services may not be regarded as being similar only on the ground that they appear in the same class under the Nice Classification.
Entry of Limitations Related to the List of Goods or
Services
Article 11
The request for entering the limitations of goods and/
or services shall contain:
1. the number of the application for the trademark registration or the number of the trademark registration;
2. the name and address of the applicant or of the trademark owner in accordance with Article 32 of the Regulations;
3. the name and address of the attorney in accordance with Article 32 of these Regulations, if the applicant has an attorney;
4. the limited list of goods and services in accordance with Article 10 of these Regulations.
Indications Contained in the Application for Registration of a Trademark to be Published in the Office Official Gazette
Article 12
(1) The Office official gazette shall publish the following indications contained in the application for registration of a trademark, in the form in which they appear in the trademark register:
1. the number of the application;
2. the application filing date;
3. the name and address of the applicant;
4 the name and address of the attorney, if the applicant has an attorney;
5. the list of goods or services for which registration is requested;
6. indications concerning the granted priority right (the date of exhibition priority or the date
and number of the first application and the
State of its filing);
7. a representation of the sign of which the registration is requested;
8. an indication that the registration of the sign in colour is requested and the names of the colours claimed as distinctive features of the sign, if the registration of the sign in colour is requested;
9. an indication that the registration of a verbal sign is requested, if the registration of a verbal sign is requested;
10. an indication that the registration of a figurative sign is requested, if the registration of a figurative sign is requested;
11. an indication that the registration of the three-dimensional sign is requested, if the registration of the three-dimensional sign is requested;
12. an indication that the registration of a sign consisted of one colour or a combination of colours is requested, if the registration of a sign consisted of a colour or a combination of colours is requested;
13. an indication that the registration of another type of sign is requested, and which, if the registration of another type of sign is requested;
14. an indication that the registration of a collective trademark is requested, if the registration of a collective trademark is requested;
15. an indication that the registration of a guarantee trademark is requested, if the registration of a guarantee trademark is requested;
(2) Indications referred to in paragraph 1 of this Article shall be represented by INID-codes, identifying the bibliographic data related to trademarks, established by the World Intellectual Property Organisation (hereinafter: INID-codes).
(3) Where an application for registration of a trademark has already been published, the corresponding indications referred to in paragraph 1 of this Article shall also be published in the Office official gazette in the case of:
1. entries in the trademark register of changes relating to an application;
2. amendments of an application within the meaning of Article 31 of the Act;
3. division of an application.
III. OPPOSITION Contents of the Opposition Article 13
(1) An opposition to registration of a trademark shall contain:
1. the number of the application for registration of a trademark in respect of which the opposition is filed;
2. the name and address of the applicant of the
application in respect of which the opposition is filed;
3. the name and address of the opponent, in accordance with Article 32 of these Regulations;
4. the name and address of the attorney, in accordance with Article 32 of these Regulations, if the opponent has an attorney;
5. the list of goods or services in respect of which the opposition is filed;
6. clear indication of the item and the paragraph of Article 6 of the Act which form the legal grounds for the opposition;
7. evidence of the legal grounds for the opposition;
8. reasons for filing the opposition;;
9. if the opposition is based on Article 6 paragraph 1, 3 and 4 item 4 of the Act and the name and address of the opponent are not identical with the name and address of the holder of the earlier trademark or other earlier industrial property right that is entered in the relevant register as the holder of this right, evidence of the legal connection between the opponent and the holder entered in the relevant register;
10. the signature or the seal of the opponent, or the signature or the seal of his attorney;
11. evidence of the payment of the prescribed fee and procedural charges.
(2) An opposition related to trademark registration shall be submitted to the Office in two identical copies.
Other Requirements for Filing Opposition
Article 14
(1) A separate opposition shall be filed in respect of any application for registration of a trademark, which is opposed.
(2) If the opposition is based on Article 6 paragraph
3 of the Act, the opponent has to prove that the trademark acquired the reputation in the Republic of Croatia before the filing date of the application for registration of a trademark in respect of which the opposition is filed, or, if the priority right is claimed, up to the date of priority right claimed in the application.
(3) If the opposition is based on Article 6 paragraph
6 of the Act, the opponent has to:
1. prove that the firm was entered in the court register before the filing date of the application for registration of a trademark in respect of which the opposition is filed, or, if the priority right is claimed, before the date of priority right claimed in the application;
2. if the applicant for trademark registration so requests, the opponent has to prove that, during the period of five years preceding the date of publication of the application, he
was producing the products or supplying the services in respect of which the opposition is filed.
Division of the Application or the Registration
Article 15
(1) The request for a division of an application or a registration of a trademark shall contain:
1. the number of the first application or registration of the trademark;
2. the name and address of the applicant or the holder of the trademark;
3. a representation of the sign;
4. the list of goods or services that are to be covered by the divisional applications or registrations;
5. the signature or the seal of the person filing the request, or the signature or the seal of his attorney;
6. evidence of the payment of the prescribed fee and procedural charges.
(2) A separate request for division shall be filed in respect of any application or registration of a trademark.
(3) The lists of goods or services of the divisional applications or registrations of trademarks and the list of goods or services of the remnants of the first application or registration, viewed together, shall be identical to the list of goods or services of the first application or registration at the time when the request for division was received. Where the division concerns goods or services falling under a general term, the general term shall be used both in the remnant of the first application or registration and the divisional application or registration, and it shall be restricted by appropriate additions to avoid any overlapping of the lists of goods or services.
(4) A complete copy of the files of the first application or registration shall become a part of the files of the divisional application or registration and a copy of the request for division shall become a part of the files of the first application or registration.
(5) A new file number shall be allotted to the divisional applications or registrations.
(6) The procedures initiated in respect of the first application or registration shall also concern the divisional applications or registrations, if they cover the goods or services in respect of which the procedures were initiated.
(7) The attorney appointed for the first application or registration shall be deemed to be also the attorney for the divisional application or registration.
IV. TRADEMARK REGISTER, PUBLICATION OF A TRADEMARK, TRADEMARK CERTIFICATE
Contents of the Trademark Register
Article 16
(1) The following indications shall be entered in the trademark register::
1. the number of the application and the registration of the trademark;
2. the application filing date;
3. indications concerning the applicant and the holder of the trademark as indicated in the application;
4. indications concerning the appointed attorney as indicated in the application in accordance with Article 2 paragraph 1 item 3 of these Regulations if the attorney has been appointed;
5. the list of goods or services;
6. indications concerning the priority right (the date of exhibition priority or the date and number of the first application and the State of its filing);
7. a representation of the sign;
8. an indication that the sign is verbal, if the sign is verbal;
9. an indication that the sign is figurative, if the sign is figurative;
10. an indication that the sign is three-dimensional, if the sign is three-dimensional;
11. an indication that the sign consists of only one colour or a combination of colours, if the sign is consisted of one colour or a combination of colours;
12. an indication that the sign is another type of a sign and which, if the sign is another type of a sign;
13. an indication that the sign is in colour and the names of the colours that are distinctive features of the sign, if the sign is in colour;
14. an indication that the trademark is collective, if the trademark is a collective trademark;
15. an indication that the trademark is a guarantee trademark, if the trademark is a guarantee trademark;;
16. a transliteration of the sign, if indicated in the application;
17. a description of the sign, if indicated in the application;
18. a translation of the sign in the Croatian language, if indicated in the application;
19. classification of figurative elements of the sign in conformity with the Classification established by the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
20. the regulations from the contract relating to the use of the collective or the guarantee trademark, if the trademark is collective or guarantee trademark;
21. the date of publication of the application in the
Office official gazette;
22. indications concerning the conclusion of the procedures before the Office;
23. the date of the registration of the trademark;
24. the date up to which the trademark shall have effect;
25. the date of publication of the registration of the trademark in the Office official gazette;
26. indications concerning the amendments of the application or registration within the meaning of Article 31 or 36 of the Act;;
27. the date and the number of the international registration of the trademark, if the trademark is registered internationally;
28. indications concerning the renewal of the registration of the trademark;
29. indications concerning the division of an application or a registration;
30. indications concerning changes relating to a trademark (transfer of rights, license, security, seizure, changes in the name and address of the applicant, holder or his attorney, change of the attorney, limitation of the list of goods or services, division of an application or a registration, indications concerning bankruptcy proceedings, amendments of the contract relating to the use of the collective trademark and other indications essential to the legal status of the trademark);
31. indications concerning the opposition as filed;
32. indications concerning the request as filed for revocation of the trademark;
33. indications concerning the request as filed for the declaration that the trademark is invalid;
34. indications concerning administrative disputes relating to the registration of the trademark;
35. indications concerning the surrender of the trademark;
36. indications concerning the ceasing of effect of the trademark, and the grounds therefore;
37. indications concerning an appeal against a decision of the Office, if an appeal was submitted (indications concerning the appellant, number and date of the decision of the Office against which the appeal is submitted, date of receipt of the appeal, indications concerning the attorney, if the appellant has one, and the date and type of decision issued regarding the appeal).
(2) The official collection of data concerning international registrations of marks (International Register) is kept by the International Bureau of the World Intellectual Property Organisation. On request of any interested person, and after the prescribed procedural charges have been paid, the Office shall issue extracts from the data collections concerning international registrations of marks that are at the Office disposal.
Indications Concerning the Registration of
a Trademark to be Published in the Office Official
Gazette
Article 17
(1) The Office official gazette shall publish the following indications concerning the registration of a trademark, in the form in which they appear in the trademark register:
1. the number of the registration of the trademark;
2. the date of the registration of the trademark;
3. the application filing date;
4. the name and address of the applicant;
5. the name and address of the attorney, if the applicant has an attorney;
6. the list of goods or services;
7. indications concerning the granted priority right (the date of exhibition priority or the date and number of the first application and the State of its filing);
8. a representation of the sign;
9. an indication that the sign is in colour and the names of the colours that are distinctive features of the sign, if the sign is in colour;
10. an indication that the sign is verbal, if the sign is verbal;
11. an indication that the sign is figurative, if the sign is figurative;
12. an indication that the sign is three-dimensional, if the sign is three-dimensional;
13. an indication that the sign consists of only one colour or a combination of colours, if the sign is consisted of one colour or a combination of colours;
14. an indication that the sign is another type of a sign and which, if the sign is another type of a sign;;
15. an indication that the trademark is collective, if the trademark is collective;
16. an indication that the trademark is a guarantee trademark, if the trademark is a guarantee trademark;
17. the date up to which the trademark shall have effect.
(2) Indications referred to in paragraph 1 of this
Article shall be represented by INID-codes.
(3) The corresponding indications referred to in paragraph 1 of this Article shall also be published in the Office official gazette in the case of:
1. entries in the trademark register of changes relating to the trademark;
2. amendments of the registration of the trademark within the meaning of Article 36 of the Act;
3. division of the registration;
4. renewal of the registration of the trademark;
5. ceasing of effect of the trademark.
Indications to be Contained in the Trademark
Certificate
Article 18
A trademark certificate shall contain the following indications:
1. the number of the registration of the trademark;
2. the date of the registration of the trademark;
3. the application filing date;
4. the name and address of the holder of the trademark;
5. the name and address of the attorney, if the holder of the trademark has an attorney;
6. the list of goods or services;
7. indications concerning the priority right;
8. a representation of the sign;
9. an indication that the sign is in colour and the names of the colours that are distinctive features of the sign;
10. an indication that the sign is verbal, if the sign is verbal;
11. an indication that the sign is figurative, if the sign is figurative;
12. an indication that the sign is three-dimensional, if the sign is three-dimensional;
13. an indication that the sign consists of only one colour or a combination of colours, if the sign is consisted of one colour or a combination of colours;
14. an indication that the sign is another type of a sign and which, if the sign is another type of a sign;;
15. an indication that the trademark is collective, if the trademark is collective;
16. an indication that the trademark is a guarantee trademark, if the trademark is a guarantee trademark;
17. the date of publication of the registration of the trademark in the Office official gazette;
18. the date up to which the trademark shall have effect.
V. RECORDING THE CHANGES IN THE REGISTER Contents of the Request for Recording of Changes Article 19
(1) A request for recording of a change shall
contain:
1. the number of the application for registration of a trademark or the number of the registration of the trademark;
2. the name and address of the applicant or the holder of the trademark;
3. the name and address of the person filing the request, in accordance with Article 32 of these Regulations;
4. the name and address of the attorney, in accordance with Article 32 of these
Regulations, if the person filing the request has an attorney;
5. a clear indication of the kind of the change concerned;
6. the signature or the seal of the person filing the request, or the signature or the seal of his attorney.
(2) Indications referred to in paragraph 1 of this Article shall be specified on the form which forms part of these Regulations (Ž-2 form), or on the form corresponding to the contents of the Ž-2 form.
(3) The form referred to in paragraph (2) of this Article shall be accompanied by:
1. evidence of the legal basis for the recording of the change, except when the request is filed for the recording of a change of the name or the address of the applicant, the holder of the trademark or the attorney.
2. the evidence of the payment of the prescribed fee and procedural charges.
(4) The provisions of this Article, and Articles 20 and
21 of these Regulations shall be applied also to the entry of the transfer of rights, licenses, security, seizure and insolvency.
Other Requirements Relating to the Request for
Recording of Changes
Article 20
(1) Where the request for the recording of a change relates to several applications, the applicant of which is the same person, or to several registrations of a trademark, the holder of which is the same person, a single request may be filed, provided that the application or registration numbers of all the applications or registrations concerned are indicated in the request.
(2) If the recording of a partial transfer is requested, the Office creates a new application or a registration of a trademark that covers the goods or services in respect of which the transfer has been made. Where the transfer concerns goods or services falling under a general term, the general term shall be used in all the new lists of goods or services to which it is transferred and it shall be restricted by appropriate additions in such a way to avoid any overlapping of the lists of goods or services.
(3) A complete copy of the files of the original application or registration shall become a part of the files of the new applications or registrations referred to in paragraph 2 of this Article and a copy of the request for recording of the transfer shall become a part of the files of the original application or registration.
(4) A new file number shall be allotted to the new application or registration of the trademark referred to in the paragraph 2 of this Article.
(5) The procedures initiated in respect of the original application or registration of a trademark shall
also concern the new applications or registrations referred to in paragraph 2 of this Article, if they cover the goods or services in respect of which the procedures were initiated.
Procedure Concerning the Request for Recording of
Changes
Article 21
(1) If the request for recording of a change is not filed in accordance with the Act and these Regulations, the Office shall invite the person who filed the request to remedy the deficiencies of the request or to file the relevant evidence within 60 days counting from the day of receipt of the invitation.
(2) If the person who filed the request complies with the invitation referred to in paragraph 1 of this Article within the prescribed time limit, the Office shall issue a decision on the recording of the change.
(3) On request, the time limit laid down in paragraph
1 of this Article may be extended for not more than 60 days.
(4) If the person who filed the request does not comply with the invitation referred to in paragraph
1 of this Article within the prescribed time limit, the request shall be rejected by a decision.
VI. RENEWAL AND CEASING OF EFFECTS OF A TRADEMARK
Contents of the Request for the Renewal of the
Registration of a Trademark
Article 22
(1) A request for the renewal of a registration of a trademark shall contain:
1. the number of the registration of the trademark;
2. the name and address of the holder of the trademark;
3. the name and address of the person filing the request, in accordance with Article 32 of these Regulations;
4. the name and address of the attorney, in accordance with Article 32 of these Regulations, if the person filing the request has an attorney;
5. an indication to the effect whether the renewal is requested for all the goods or services or only for some goods or services for which the trademark is registered;
6. the signature or the seal of the person filing the request, or the signature or the seal of her/ his attorney.
(2) Indications referred to in paragraph (1) of this Article shall be specified on the form which forms part of these Regulations (Ž-3 form), or on the form corresponding to the contents of the Ž-3 form.
(3) The form referred to in paragraph 2 of this Article shall be accompanied by:
1. the list of goods or services for which the trademark is registered with the clear indication for which goods or services the renewal is requested, if the renewal is requested for only some of the goods or services;
2. and procedural charges.
Procedure Concerning the Request for Renewal of the Registration of a Trademark
Article 23
Article 21 of these Regulations shall also apply to the procedure concerning the request for renewal of the registration of a trademark. ContentsoftheRequestfortheRevocationofaTrademark
Article 24
(1) A separate request for the revocation of a trademark shall be filed for any trademark in respect of which the request is filed.
(2) A request for the revocation of a trademark shall contain:
1. the number of the registration of the trademark in respect of which the request is filed;
2. the name and address of the holder of the trademark;
3. the name and address of the person filing the request, in accordance with Article 32 of these Regulations;
4. the name and address of the attorney, in accordance with Article 32 of these Regulations, if the person filing the request has an attorney;
5. the list of goods or services in respect of which the request is filed;
6. reasons for filing the request for the revocation of a trademark;
7. the signature or the seal of the person filing the request, or the signature or the seal of his attorney;
8. evidence of the payment of the prescribed fee and procedural charges..
Contents of the Request for Declaring the Trademark Invalid
Article 25
(1) A request for the declaration that the trademark is invalid shall contain:
1. the number of the registration of the trademark in respect of which the request is filed;
2. the name and address of the holder of the trademark in respect of which the request is filed;
3. the name and address of the person filing the request, in accordance with Article 32 of these Regulations;
4. the name and address of the attorney, in accordance with Article 32 of these
Regulations, if the person filing the request has an attorney;
5. the list of goods or services in respect of which the request is filed;
6. legal grounds for the declaration that the trademark is invalid;
7. evidence of the legal grounds for the declaration that the trademark is invalid;
8. reasons for filing the request;
9. if the opponent is a licensee, evidence of the fact that he has acquired the right to file the request in accordance with Article 39 paragraph 4 or 5 of the Act;
10. evidence that the earlier trademark fulfils the requirements of use set out in Article 13 paragraph 2 to 4 of the Act, if the request is filed on the grounds of Article 6 paragraph 1,
3 and 7 of the Act;
11. the signature or the seal of the person filing the request, or the signature or the seal of his attorney;
12. evidence of the payment of the prescribed fee and procedural charges.
(2) The request for declaring the trademark invalid shall be submitted to the Office in tow identical copies.
Other Requirements for Filing the Request for
Declaring the Trademark Invalid
Article 26
(1) A separate request for the declaration that the trademark is invalid shall be filed for any trademark in respect of which the request is filed.
(2) If the request for the declaration that the trademark is invalid is based on Article 6 paragraph 6 of the Act, the opponent has to:
1. prove that the firm was entered in the court register before the date of the application for registration of a trademark in respect of which the request is filed, or before the date of priority right claimed in the request, if the priority right is claimed;
2. prove that he produces the products or supplies the services in respect of which the request is filed.
VII. APPEAL Appeals Procedure Article 27
(1) The appeals procedure shall be initiated by filing
an appeal to the Appeals Council.
(2) The appeal referred to in paragraph 1 of this
Article shall contain:
1. an express indication that the appeal is being filed;
2. name and address of the appellant in accordance with Article 32 of these Regulations;
3. a classification mark of the Office’s decision against which an appeal is being filed;
4. number of the application or of the trademark registration;
5. an indication to the effect is the appeal filed against the decision in its entirety or against certain parts of the decision, reasons for which the appeal is being filed, with necessary evidence;
6. evidence on payment of the prescribed fees and procedural charges.
(3) The appeal shall be submitted in two identical copies by post or directly to the Office, which shall forward it to the Appeals Council through the Secretariat referred to in Article 91 paragraph
5 of the Patent Act (“Official Gazette”, Nos. 173/2003, 87/2005 i 76/2007).
VIII. PROVISIONS CONCERNING INTERNATIONAL REGISTRATIONS OF TRADEMARKS
Application for the International Registration of a
Trademark
Article 28
(1) The application for international registration of a trademark shall contain:
1. the number of the application or the registration of the trademark that is the basis for the international registration (hereinafter: the basic application or registration);
2. the name and address of the applicant, in accordance with Article 32 of these Regulations;
3. the name and address of the attorney, in accordance with Article 32 of these Regulations, if the applicant has an attorney;
4. a representation of the sign;
5. indications concerning the priority claim, if the priority is claimed;
6. if the registration of the sign in colour is requested, an indication to that effect and the names of the colours which the applicant claims as distinctive features of the sign; the colours shall be indicated in the language of the international application prescribed by the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (hereinafter: „the Common Regulations„( �
7 designations of the members of the Madrid Union for which the international registration is requested;
8. the signature or the seal of the applicant, or the signature or the seal of his attorney.
(2) Indications referred to in paragraph 1 of this Article shall be specified on the corresponding form issued by the Office (MŽ-1 forms), on the forms prescribed by the International Bureau of the World Intellectual Property Organisation
(hereinafter: „the International Bureau“) or on the forms corresponding to the contents of the above- mentioned forms. If the application is filed on the form prescribed by the International Bureau, two copies of the form shall be filed.
(3) The form referred to in paragraph 2 of this Article shall be accompanied by:
1. the list of goods or services for which the international registration is requested, in the language of the international application prescribed by the Common Regulations; the list of goods or services may cover all the goods or services encompassed by the basic application, or only a part thereof;
2. if the sign is figurative or three-dimensional, an additional representation of the sign, which has to be identical to the representation of the sign on the application form;
3. the evidence of the payment of the prescribed fee and procedural charges.
(4) A description of the sign may also be indicated in the application for international registration of a trademark, if it is contained in the basic application or registration. A translation of the sign may also be indicated. The description and the translation of the sign shall be indicated in the language of the international application prescribed by the Common Regulations.
(5) The indications referred to in paragraph 1 items 1,
4, 5 and 6 of this Article shall be identical with the corresponding indications contained in the basic application or the registration of the trademark.
Request for Recording of Changes in the International Register
Article 29
(1) A request for recording of a change in the
International Register shall contain:
1. the number of the international trademark application or registration;
2. the name and address of the applicant or the holder of the international registration;
3. the name and address of the person filing the request, in accordance with Article 32 of these Regulations;
4. the name and address of the attorney, in accordance with Article 32 of these Regulations, if the person filing the request has an attorney;
5. a clear indication of the kind of the change concerned;
6. the signature or the seal of the person filing the request, or the signature or the seal of his attorney.
(2) If the request is filed in respect of only a part of the goods or services covered by the international registration of the trademark, this part of the goods or services shall be indicated in the language of the international application prescribed by the Common Regulations.
(3) Indications referred to in paragraph 1 of this Article may be specified on the forms issued by the International Bureau or on the forms corresponding to the contents of these forms. If the request for recording of a change is filed on the form issued by the International Bureau, two copies of the form shall be filed.
(4) The form for recording of a change shall be accompanied by:
1. evidence as to the legal basis of the change, except when the request is filed for the recording of a change of the name or the address of the applicant, the holder of the international registration or the attorney.
2. a separate communication containing the indications referred to in paragraph 1 of this Article that are not possible to indicate on the forms prescribed by the International Bureau.
IX. COMMUNITY TRADEMARK
Filing the Community Trademark Application through the Office
Article 30
(1) If the application for the registration of a Community Trademark (hereinafter: “the Community trademark application”) is filed through the Office, the applicant shall submit evidence on payment of the administrative fee and the procedural charges for forwarding the Community trademark application to the Office for Harmonization in the Internal Market in addition to the Community trademark application, in accordance with special regulations.
(2) If the prescribed administrative fees and procedural charges for forwarding the Community trademark application are not paid for at the time of filing of the Community trademark application, and if they are not paid and the Office does not receive evidence on their payment within 14 days from receipt of the Community trademark application by the Office, it shall be presumed that the applicant withdrew the Community trademark application.
Transformation of the Community Trademark
Application into the National Trademark Application
Article 31
(1) The translation of the application into the Croatian language, submitted by the applicant requesting the transformation of the Community trademark application into the national trademark application in response to the invitation of the Office in accordance with Article 67e of the Act, shall contain also the translation of the list of products and services into the Croatian language, as well as all other documents possibly attached to the Community trademark application.
(2) The applicant requesting the transformation of
the Community trademark application into the national application, which in accordance with special provisions concerning representation has to name an attorney in the field of intellectual property rights, may submit the translation of the Community trademark application referred to in paragraph 1 of these Regulations only through the attorney, which must submit a regular power of attorney in addition to the translation of the Community trademark application.
X. GENERAL PROVISIONS Name and Address Article 32
(1) In the communications submitted to the Office,
the name and the address of the applicant, opponent or the person filing requests shall be indicated in the following manner:
1. if the applicant, the opponent or the person filing requests is a natural person: given name and family name of the applicant, the opponent or the person filing requests, street, house number, postal code, place and the State in which he has a domicile;;
2. if the applicant, the opponent or the person filing requests is a legal person: the firm or the name of the applicant, the opponent or the person filing requests, street, house number, postal code, place and the State in which he has a real and effective industrial or commercial seat.
(2) In the communications submitted to the Office, the name and the address of the attorney shall be indicated in the following manner:
1. if the attorney is a natural person: given name and family name of the attorney, street, house number, postal code and place;
2. if the attorney is a legal person: the firm, street, house number, postal code and the place.
(3) Where several applicants, opponents or persons filing requests are indicated, for the purpose of delivery of communications, only the address of the applicant who is mentioned first shall be taken into account, except where the applicant indicates another address as the address for correspondence.
(4) Where several addresses of the applicant, the opponent or the person filing requests or several addresses of the attorney are indicated, only the address mentioned first shall be taken into account, except where the applicant, the opponent, the person filing requests or the attorney indicates one of the addresses as the address for correspondence.
(5) A communication may also indicate other ways of establishing contact with the applicant, the opponent, the person filing requests or the attorney (telephone number, telefax number and E-mail address).
(6) The provisions of this Article, as well as of Articles
33 and 34 of these Regulations, shall be applied also on submissions to the Appeals Council.
Other Requirements for Communications
Article 33
(1) The Office accepts a handwritten signature and a stamped signature on communications submitted to the Office.
(2) If a communication is accompanied by several evidences the evidences should be, whenever possible, listed and marked by the number of the file they relate to.
Submitting of Communications
Article 34
(1) A communication may be submitted to the Office by personal delivery, by post and by fax.
(2) The application for the trademark registration submitted by facsimile must be submitted in the original within 15 days from the receipt by fax.
(3) If the Office has a reason to think that the communication submitted in photocopy or by fax is incomplete or if it has a reason to doubt the veracity of such communication, it may invite the person who submitted the communication to file the original of this communication within
30 days counting from the day of receipt of the invitation..
(4) If the person who submitted the communication complies with the invitation referred to in paragraph 3 of this Article, the date of the receipt of the communication shall be the date on which the photocopy of the communication was submitted to the Office or the date the Office received the communication sent by fax.
(5) If the person who filed the request does not comply with the invitation referred to in paragraph
3 of this Article within the prescribed time limit, it shall be deemed that the Office has not received the communication.
Power of Attorney
Article 35
(1) If a power of attorney is incomplete, the Office shall invite the person who submitted the power of attorney to remedy the found deficiencies within 60 days counting from the day of receipt of the invitation.
(2) If the person who submitted the power of attorney 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, it shall be deemed that the attorney has not be appointed.
X. TRANSITIONAL AND FINAL PROVISIONS
Ceasing of Effect of Other Provisions
Article 36
The provisions of the Trademark Regulations (“Official Gazette”, No. 72/2004) shall cease to be in effect on the day on which these Regulations shall enter into force.
Entry into Force of These Regulations
Article 37
These Regulations shall enter into force on the day they are published in the “Official Gazette”, with the exception of Articles 30 and 31 of these Regulations, which shall enter into force on the day the Republic of Croatia accedes to the full membership of the European Union, and Article 16 paragraph 1 item 37, Article 27 and Article 32 paragraph 6 of these Regulations which shall enter into force on 1 June 2008.
REGULATIONS ON AMENDMENTS TO THE TRADEMARK REGULATIONS*
Article 1
In the Trademark Regulations (“Official Gazette” No
117/2007) in Article 7, paragraph (3) is added to read:
“If the application filed electronically in accordance with Article 35 of these Regulations requests the registration of a sound mark, it may contain one electronic sound file containing such sound mark.”
Article 2
In Article 19, paragraph (4) is amended to read:
“(4) The provisions of this Article and of Articles 20 and 21 of these Regulations shall also apply to the entry of transfer of rights, license and rights in rem in the register.”
Article 3
In Article 21 paragraph (1) the words “shall invite the person who filed the request” are replaced by the words “shall order the person who filed the request by a conclusion” and the word “invitation” is replaced by the word “conclusion”.
In paragraph (4), the words “with the invitation” are replaced by the words “with the conclusion”, and the Croatian words translated as “by a decision” are replaced by other Croatian words translated as “by a decision”.
Article 4
In Article 30, paragraph (2) is deleted.
Article 5
In Article 31 paragraph (1) the word “invitation” is replaced by the word “conclusion”.
Article 6
Article 34 is amended to read:
“(1) A communication may be submitted to the Office by personal delivery and by post.
(2) If the Office has reasons to doubt the completeness or authenticity of the communication submitted in photocopy, it may order by a conclusion the submission of its original within a period of 30 days from the receipt of the conclusion.
(3) If the person who submitted the communication complies with the conclusion referred to in paragraph (2) of this Article, the date on which the photocopy of the communication is submitted to
the Office shall be considered as the date of the receipt of the communication.
(4) If the person who submitted the communication fails to comply with the conclusion referred to in paragraph (2) of this Article within the prescribed time limit, it shall be considered that the Office has not received the communication.”
Article 7
A heading above Article 35 and Article 35 are amended to read:
“Filing of an application in electronic form
Article 35
(1) An application for the registration of a trademark may be filed in electronic form by using an e-filing service available at the web site of the Office.
(2) The Office shall publish at its web site technical pre-conditions for the realization of electronic communication for filing an application in accordance with paragraph (1) of this Article. The applicant who wishes to file an application in accordance with paragraph (1) of this Article shall ensure technical pre-conditions required for filing applications and other data or attachments by electronic means. The Office shall ensure the required software and hardware support for receiving applications and other data or attachments by electronic means.
(3) When filing an application and other data or attachments in accordance with paragraph (1) of this Article, the applicant shall use qualified certificates, issued by an authorized legal person, registered for issuing certificates.
(4) The application filed in accordance with paragraph (1) of this Article shall be considered received by the Office, where the advanced electronic signature has been verified by an automatic action.
(5) Upon the receipt of a successfully received application in accordance with paragraph (1) of this Article, the Office shall notify the applicant by e-mail of the receipt of the application, indicating a temporary file number, as well as the date and time of the receipt.
(6) If the application is filed in accordance with paragraph (1) of this Article, the attachments
*NN 66/2011, in force from June 15, 2011
which shall accompany the application shall be filed in the same manner. The applications filed electronically and carrying an advanced electronic signature shall be considered as signed by a hand-written signature.
(7) The attachments accompanying the application filed in accordance with paragraph (1) of this Article shall be considered as original documents, and the applicant shall guarantee by the advanced electronic signature that the attached documentation in electronic form is identical with the original documentation.”
Article 8
Ž-1, Ž-2, Ž-3 and MŽ-1 forms used up to now shall cease to be valid on the date of the entry into force of these Regulations.
New Ž-1, Ž-2, Ž-3 and MŽ-1 forms shall be applied as of the date of the entry into force of these Regulations, and shall form the integral part thereof.
Article 9
These Regulations shall enter into force on the date of the publication thereof in the "Official Gayette".