TABLE OF CONTENTS
Article
Part I: Basic Provisions
Scope of Application 1
Signs which Can Be Protected as Trademarks 2
Persons who May Be Holders of a Trademark 3
Acquisition of a Trademark 4
Absolute Grounds for Refusal 5
Relative Grounds for Refusal 6
Part II: Effects of a Trademark
Rights Conferred by a Trademark. 7
Reproduction of a Trademark in Dictionaries 8
Prohibition on the Use of a Trademark Registered in the Name of a Trade Agent or Representative 9
Limitation of the Effects of a Trademark 10
Exhaustion of the Rights 11
Limitation in Consequence of Acquiescence 12
Part III: Use of Trademarks
Use of Trademarks 13
Part IV: Application for Registration of a Trademark
Filing of an Application 14
Requirements with which an Application Must Comply 15
Classification 16
Application Filing Priority 17
Union Priority Right 18
Exhibition Priority Right 19
Part V: Procedure for the Registration of a Trademark
The Office Authority 20
Examination of the Correctness of the Application 21
Remedying the Deficiencies of the Application 22
Rejection of the Application 23
Refusal of the Registration of a Trademark 24
Publication of the Application 25
Opinions by Third Parties 26
Opposition 27
Opposition Procedure 28
Examination of the Opposition 29
Withdrawal of the Application and Restriction of the List of Goods or Services 30
Amendments of the Application for Registration of a Trademark 31
Registration of the Trademark 32
Division of the Application and the Registration 33
Publication of the Trademark 34
Trademark Certificate 35
Amendments of the Registration of a Trademark 36
Part VI: Changes Relating to a Trademark
Entry of Changes 37
Transfer of Rights 38
Licence 39
Rights in Rem and Levy of Execution 40
Bankruptcy Proceedings 41
Rights Conferred by an Application 42
Part VII: Duration, Renewal and Ceasing of Effects of a Trademark
Period of Protection 43
Renewal of the Registration of a Trademark 44
Surrender of the Trademark 45
Revocation of the Trademark 46
Revocation Procedure 47
Examination of the Request for Revocation of a Trademark 48
Declaration that the Trademark is Invalid 49
Procedure Concerning the Request for a Declaration that a Trademark is Invalid 50
Examination of the Request for a Declaration that a Trademark is Invalid 51
Partial Refusal of Registration of a Trademark, Revocation of a Trademark or Declaration that a Trademark is Invalid 52
Part VIII: Collective and Guarantee Mark
Collective Mark 53
Guarantee Mark 54
Special Provisions on Collective Marks and Guarantee Marks 55
Persons who May Be Holders of a Collective Mark 56
Contract on a Collective Mark 57
Use of Collective Marks 58
Amendments of the Contract Governing Use of the Collective Mark 59
Part IX: Protection of Trademarks Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement
Special Provisions on International Registrations of Marks 60
Filing of the International Application and the Request for Recording of a Change in the International Register 61
Fees 62
Entry in the Trademark Register 63
Refusal of Protection to the International Registration of a Mark 64
Opposition to the International Registration of a Mark 65
Opposition and the Procedure for a Declaration that a Trademark is Invalid on the Basis of an International Registration of a Mark 66
Declaration that an International Registration of a Mark is Invalid and Revocation of an International Registration of a Mark 67
Part X: Common Provisions Relating to the Procedure before the Office
Other Regulations Applied in the Procedure before the Office 68
Fees and Procedural Charges 69
Certificate of Priority Right 70
Trademark Register 71
Official Gazette 72
Search 73
Representation before the Office 74
Part XI: Civil Protection
Action Concerning the Infringement of Rights 75
Request For the Destruction 76
Limitation of Actions 77
Provisional Measures 78
Compensation for Damage 79
Part XII: Provisions Concerning Misdemeanours
Misdemeanours 80
Part XIII: Transitional and Final Provisions
Pending Procedures Concerning Applications for Registration of a Trademark 81
Other Pending Procedures 82
Implementing Regulation 83
Ceasing of the Validity of Other Provisions 84
Entry into Force 85
(Unofficial translation)
1.—(1) This Law shall apply to every individual, collective and guarantee trademark which is the subject of a registration or an application for registration of a trademark in the State Intellectual Property Office of the Republic of Croatia (hereinafter: “the Office”), or of an international registration of a mark having effect in the Republic of Croatia.
(2) The application of this Law does not exclude the application of other laws and regulations relating to trademarks.
Signs which Can Be Protected as Trademarks
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, colours, 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 other undertakings.
Persons who May Be Holders of a Trademark
3.—(1) Any natural or legal person may be a holder of a trademark or an applicant for registration of a trademark.
(2) Foreign legal and natural persons not having a seat or domicile or usual residence, respectively, in the Republic of Croatia shall, under this Law, enjoy the same rights as are enjoyed by the persons having a domicile or a real and effective industrial or commercial seat 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.
4.—(1) In the Republic of Croatia a trademark shall be acquired by registration.
(2) For the purposes of this Law, “registration” means entry in the trademark register kept by the Office.
5.—(1) The following shall not be registered:
1. signs, which may not be protected as trademarks in accordance with requirements set out in Article 2 of this Law,
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 rendering 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 current language or in good faith and the established practices of the trade,
5. signs which consist exclusively of the shape which results from the nature of the goods themselves, 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 or 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, State armorial bearing, emblem, flag or other official sign of the Republic of Croatia, or a part thereof, and the imitations 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) 2. to 4. of this Article if the applicant proves that the sign has, before the date of application for registration and following the use which has been made of it, acquired a distinctive character in respect of the goods or services for which registration is requested.
6.—(1) Upon opposition, a sign shall not be registered:
1. if it is identical with an earlier trademark 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 exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark.
(2) For the purposes of this Law, “earlier trademark” means:
1. trademarks registered in the Republic of Croatia, enjoying priority right referred to in Articles 17, 18 and 19 of this Law,
2. trademarks registered under international treaties, which have effect in the Republic of Croatia, enjoying priority right referred to in Articles 17, 18 and 19 of this Law,
3. applications for registration of trademarks referred to in subparagraph 1. of this paragraph, provided that the trademarks become registered,
4. trademarks which, on the date of application for registration of a trademark, or on the date of priority right claimed in respect of 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 by the holder of an earlier trademark, a sign shall not be registered if it is identical with, or similar to, an earlier trademark and is to be registered 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 repute of the earlier trademark;
(4) Upon opposition, a sign shall not be registered if its use would infringe one of the following earlier rights:
1. a right to a personal name,
2. a right of personal portrayal,
3. a copyright,
4. industrial property rights.
(5) For the purposes of this Law, “earlier right” means rights acquired on the date which is earlier than the date of application for registration of a trademark, or, if priority right is claimed, earlier than the date of priority claimed in respect of the application.
(6) Upon opposition, a sign shall not be registered if its use would infringe the right of the person who, at the time of filing an application for 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.
(7) Upon opposition, 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 within a period of a maximum of two years from the expiry of the trademark, unless the holder of the earlier trademark gave his agreement for registration of the later trademark or did not use his trademark.
Part Two
Effects of a Trademark
Rights Conferred by a Trademark
7.—(1) The registered trademark shall confer on the holder exclusive rights therein.
(2) The holder shall be entitled to prevent all third parties not having his consent from using in the course of trade:
1. any sign which is identical with his trademark in relation to goods or services which are identical with those for which the trademark is registered,
2. any sign where, because of its identity with, or similarity to, his trademark and the identity or similarity of the goods or services covered by the trademark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trademark,
3. any sign which is identical with, or similar to, his trademark in relation to goods or services which are not similar to those for which the trademark is registered, where the trademark has a reputation in the Republic of Croatia and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.
(3) The following may also be prohibited under paragraph (2) of this Article, by the holder of a trademark:
1. affixing the sign to the goods or to the packaging thereof,
2. offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder,
3. importing or exporting the goods under the sign,
4. using the sign on business papers and in advertising.
(4) The rights conferred by a trademark shall have effect against third parties from the date of publication of the registration of a trademark.
Reproduction of a Trademark in Dictionaries
8. If the reproduction of a trademark in a dictionary, encyclopaedia 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, at the latest in the next edition of the publication, is accompanied by an indication that it is a registered trademark.
Prohibition on the Use of a Trademark Registered in the Name
of a Trade Agent or Representative
9. Where a trademark is registered in the name of the trade agent or 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
10.—(1) The trademark shall not entitle the holder to prohibit a third party from using, in the course of trade: his own name or address, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or indications concerning other characteristics of goods or services.
(2) The trademark shall not entitle the holder to prohibit a third party from using, in the course of trade the trademark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with established and honest practices in industrial or commercial matters and fair competition.
(3) The trade mark shall not entitle the holder of a trademark to prohibit a third party from using, in the course of trade, an earlier right which only applies in a particular locality if that right is recognized by the laws of the Member State in question and within the limits of the territory in which it is recognized.
11.—(1) Exhaustion of the Right to prohibit the use of a trademark in relation to goods or services starts having effect by putting these goods or services on the market in the Republic of Croatia by the holder or with his consent.
(2) Paragraph (1) of this Article shall not apply where there exist legitimate reasons for the holder to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.
(3) The exhaustion of the rights referred to in paragraph (1) of this Article may be extended beyond the territory of the Republic of Croatia, if this is in conformity with international treaties, which are binding on the Republic of Croatia.
Limitation in Consequence of Acquiescence
12.—(1) Where the holder of an earlier trademark has acquiesced, for a period of five successive years, in the use of a later trademark while being aware of such use, he shall no longer be entitled on the basis of the earlier trademark either to file a request for a declaration that the later trademark is invalid or to oppose the use of the later trademark in respect of the goods or services for which the later trademark has been used, unless registration of the later trademark was applied for in bad faith.
(2) Paragraph (1) of this Article shall also apply to holders of earlier rights referred to in Article 6 (4) or (6) of this Law.
(3) In the cases referred to in paragraphs (1) and (2) of this Article, the holder of a later registered trademark shall not be entitled to oppose the use of the earlier right, even though the holder of the earlier right may no longer invoke that right against the later trademark.
13.—(1) A holder of a trademark shall be entitled to use a trademark in respect of the goods or services for which it is registered.
(2) The following shall also constitute use within the meaning of paragraph (1) of this Article:
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.
(3) Use of the trademark with the consent of the holder or by any person who has authority to use a collective mark or a guarantee mark shall be deemed to constitute use by the holder.
(4) If, within a period of five years following the date of registration, the holder has not put his trademark to genuine use in the Republic of Croatia in respect of the goods or services for which it is registered, or if such use has been suspended during an uninterrupted period of five years, the consequences of such non-use are prescribed in Article 29 (2) and Article 51 (5) of this Law, unless there are proper reasons for non-use.
Part Four
Application for Registration of a Trademark
14.—(1) An application for registration of a trademark shall be filed at the Office.
(2) An applicant cannot, by one application, request registration of more than one sign for which trademark protection is sought.
Requirements with which an Application Must Comply
15.—(1) An application for registration of a trademark shall contain:
1. a request for registration of a trademark,
2. information about the applicant,
3. a list of the goods or services for which the registration is requested,
4. a representation of the sign of which the registration is requested.
(2) An application for registration of a trademark shall be considered to have been filed if it complies with the requirements set out in paragraph (1) of this Article.
(3) Other elements of the application and the attachments thereto shall be filed in accordance with the Regulations on Trademarks (hereinafter: “the Regulations”) defining the implementation of this Law.
16. The goods or services in respect of which an application for registration of a trademark is filed shall be classified in conformity with the International Classification of Goods or Services established by the Nice Agreement Concerning the International Classification of Goods or Services for the Purposes of the Registration of Marks.
17.—(1) If the application for registration of a trademark is filed in accordance with Article 15 (1) of this Law, the applicant shall acquire the right of priority on the basis of the application filing date over any other applicant filing later an application for the identical or similar sign for which the registration for the identical or similar goods or services is requested.
(2) Every application filed under multilateral agreements to which the Republic of Croatia is a party also gives rise to a right of priority.
18.—(1) If the applicant has filed the application for the first time in a State member of the Paris Union for the Protection of Industrial Property (hereinafter: “the Paris Union”) or in a State member of the World Trade Organization, he may, when filing the application for the same trademark in the Republic of Croatia, invoke the date of the first filing, provided that he files the application in the Republic of Croatia within six months from the date of the first filing.
(2) The applicant invoking the union priority right shall indicate, in the application he is filing with the Office, the relevant data on the application he is invoking (State, filing date and filing number) and shall attach thereto the true copy of the first application certified by the competent authority of the member State of the Paris Union or the State member of the World Trade Organization not later than within three months from the date of filing a priority claim, as well as the translation of the first application into the Croatian language.
19.—(1) If the applicant has displayed the goods or services designated by a specific sign at an official or officially recognized international exhibition in the Republic of Croatia, in any of the member States of the Paris Union or in any of the member States of the World Trade Organization, he may request that the date of the first day of the exhibition of the goods or of rendering of the services be accorded as the date of the first application, provided that he files the application in the Republic of Croatia within six months counting from that date.
(2) The applicant invoking the exhibition priority right shall, in addition to the application he is filing with the Office, submit a certificate issued by the competent authority of the member State of the Paris Union or the member State of the World Trade Organization indicating the type of the exhibition, the venue thereof, its opening and closing dates and the first day of the exhibition of the goods or services specified in the application.
Part Five
Procedure for the Registration of a Trademark
20.—(1) The administrative procedures relating to registration of trademarks shall be carried out by the Office.
(2) The administrative decisions made by the Office shall not be subject to any appeal, but an administrative lawsuit may be instituted.
Examination of the Correctness of the Application
21.—(1) The examination of the correctness of the application shall include the examination of all the requirements prescribed by this Law and the Regulations.
(2) The trademark application shall be correct:
1. if it is filed in accordance with Article 14 (2) of this Law,
2. if it is filed in accordance with requirements set out in Article 15 (1) and (3) of this Law.
Remedying the Deficiencies of the Application
22.—(1) If the application for registration of a trademark complies with the requirements set out in Article 15 (1) of this Law, but is not filed in a way to contain all the necessary elements and attachments in accordance with the Regulations, the Office shall invite the applicant to remedy the deficiencies within 60 days counting from the day of receipt of the invitation.
(2) If the applicant remedies the deficiencies in the application in accordance with the invitation referred to in paragraph (1) of this Article within the prescribed time limit, the application shall be considered to be correct as from the beginning.
(3) If the application does not comply with the requirements set out in Article 15 (1) of this Law, it shall not be considered as the application for registration of a trademark, and the Office shall invite the applicant to remedy all the found deficiencies within 60 days counting from the day of receipt of the invitation.
(4) The date of receipt of the corrected application within the meaning of the paragraph (3) of this Article shall be considered to be the date for establishing priority right referred to in Article 17 of this Law.
(5) On request of the applicant, the time limit laid down in paragraphs (1) and (3) of this Article may be extended for not more than 60 days.
23. If the applicant 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 (1) and (3) of this Law, the application shall be rejected by a decision.
Refusal of the Registration of a Trademark
24.—(1) The decision on the refusal of registration in full or the decision on the refusal of registration in respect of only some goods or services for which registration was requested shall not be made if the applicant has not been previously notified in writing about the grounds of refusal and invited to withdraw the application or change it or submit his observations on the grounds for refusal of the registration.
(2) The applicant shall have the right to act according to paragraph (1) of this Article within 60 days counting from the day of the receipt of the written notification of grounds of refusal of the registration and submit evidence on the possible new facts that might influence the final decision of the Office.
(3) On request of the applicant, the time limit referred to in paragraph (2) of this Article may be extended for not more than 60 days.
Publication of the Application
25.—(1) If all the requirements set out in Article 21 (2) of this Law are complied with, if there are no grounds for refusal of registration under Article 5 (1) of this Law and if the prescribed procedural charges for the publication of an application are paid, the application data shall be published in “The Croatian Intellectual Property Gazette” (hereinafter: “the Office official gazette”).
(2) The application data to be published in the Office official gazette shall be prescribed by the Regulations.
26.—(1) Following the publication of an application for registration of a trademark, any natural or legal person and any body or group representing manufacturers, suppliers of services, traders or consumers, may submit to the Office, within a period of three months from the date of publication of the application, their written opinions, explaining, in particular, the grounds from Article 5 of this Law.
(2) The persons, bodies or groups referred to in paragraph (1) of this Article shall not be considered parties to the proceedings.
(3) The Office shall send the opinions referred to in paragraph (1) of this Article to the applicant who may submit his observations on them within 15 days from the day of receipt of the opinion.
27.—(1) Within a period of three months from the date of publication of an application for registration of a trademark, an opposition to registration of the trademark may be filed with the Office:
1. in respect of Article 6 (1) and (3) of this Law, by the holder of an earlier trademark and the licensee in accordance with Article 39 (4) and (5) of this Law,
2. by the holder of an earlier right referred to in Article 6 (4) of this Law,
3. by the person who had a firm within the meaning of Article 6 (6) of this Law,
4. by the holder of an earlier trademark within the meaning of Article 6 (7) of this Law.
(2) If, on the date of publication of an application, the earlier trademark, on which the opposition is based, is subject to a pending revocation procedure or a pending procedure for a declaration that the trademark is invalid, the Office shall suspend the opposition procedure until the decision from the earlier initiated revocation procedure or the procedure for a declaration that the trademark is invalid has become final.
(3) The time limit for filing the opposition, laid down in paragraph (1) of this Article, shall not be extended, nor shall it be possible to submit, after the expiry of this time limit, additions to the opposition, which include additional evidence and documentation supporting the grounds specified in the opposition.
(4) The opposition shall be filed as prescribed by the Regulations.
28.—(1) The Office shall examine whether the opposition is filed by the person entitled to file the opposition within the meaning of Article 27(1) of this Law, whether the opposition is filed in the prescribed time limit and whether it is filed as prescribed by the Regulations.
(2) If the requirements set out in paragraph (1) of this Article are not complied with, the Office shall issue a decision on the rejection of the opposition.
(3) If the requirements set out in paragraph (1) of this Article are complied with, the Office shall notify the applicant of the opposition, send him a copy of the opposition and invite him to submit his observations on the opposition within 60 days from the day of receipt of the notification.
(4) The time limit referred to in paragraph (3) of this Article shall not be extended, nor shall it be possible to submit, after the expiry of this time limit, additions to the observations on the opposition, which include additional evidence and documentation.
(5) If the applicant does not submit his observations on the opposition within the prescribed time limit, the registration of the trademark shall be refused within the limits of the requests referred to in the opposition.
(6) If the Office considers that oral proceedings are necessary in the opposition procedure, they shall be held at the instance of the Office.
29.—(1) If the applicant submits his observations on the opposition within the prescribed time limit, the Office shall examine the justification of the grounds specified in the opposition.
(2) If the applicant so requests, the holder of an earlier trademark who has filed the opposition to a registration shall furnish proof that, during the period of five years preceding the date of publication of the application, he has put the trademark to use in the Republic of Croatia within the meaning of Article 13 (2) to (4) of this Law, 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 proper reasons for non-use, provided the earlier trademark has, on the date of publication of the application for registration of the trademark, been registered for not less than five years.
(3) If the holder does not prove the use of his trademark within the meaning of the paragraph (2) of this Article, the opposition shall be refused.
(4) If the earlier trademark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
(5) If, in the examination procedure concerning the opposition, the Office finds that the opposition is unjustified, it shall be refused and the decision to that effect shall be sent to the applicant and to the opponent.
(6) If, in the examination procedure concerning the opposition, the Office finds that the opposition is justified, the registration of the trademark shall be refused or partially granted and the decision to that effect shall be sent to the applicant and to the opponent.
Withdrawal of the Application
and Restriction of the List of Goods or Services
30.—(1) The applicant may at any time withdraw his application or restrict the list of goods or services contained therein.
(2) Where the application has already been published, the withdrawal of the application or restriction of the list of goods or services shall be published in the Office official gazette later on.
Amendments of the Application
for Registration of a Trademark
31.—(1) On request of the applicant or ex officio, amendments of the application for registration of a trademark can be made only in cases where it is necessary to correct the name or address of the applicant, errors of wording or of copying, or to correct some other obvious mistakes, provided that such corrections do not entail extension of the list of goods or services.
(2) The representation of a sign that is applied for shall not be altered, except when it includes the name and address of the applicant. In that case, on request of the applicant, an alteration may be entered in the register if it does not substantially affect the identity of the sign as originally entered in the register.
(3) Where the application has already been published, the amendments of the application shall be published in the Office official gazette later on, subject to the prior payment of the prescribed procedural charges.
32.—(1) If the grounds referred to in Article 5 (1) and Article 6 of this Law do not constitute a barrier to the registration, the trademark shall be entered in the trademark register, subject to the prior payment of the procedural charges for the maintenance of the trademark for the first ten-year period and for the publication of the data on the trademark.
(2) If the procedural charges referred to in the paragraph (1) of this Article are not paid, the application for registration of a trademark shall be rejected by a decision.
Division of the Application and the Registration
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.
(4) The data concerning divisional applications or registrations shall be entered in the register and published in the Office official gazette.
34.—(1) The data concerning a trademark shall be published in the Office official gazette not later than within three months from the date 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.
35.—(1) On request of the holder of a trademark, and subject to the prior payment of the prescribed procedural charges for the issuance of the trademark certificate, the Office shall issue the certificate to the holder 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.
Amendments of the Registration of a Trademark
36.—(1) On request of the holder or 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, errors of wording or of copying, or to correct some other obvious mistakes, provided that such corrections do not entail extension of the list of goods or services.
(2) The representation of a trademark shall not be altered during the period of registration or on renewal thereof, except when it includes the name and address of the holder. In that case, on request of the holder, an alteration may be entered in the register if it does not substantially affect the identity of the trademark as originally entered in the register.
(3) 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.
Part Six
Changes Relating to a Trademark
37.—(1) On request of the applicant or the holder of a trademark, the Office shall enter in the register all the changes occurring after the filing of the application for 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.
(2) The changes entered in the trademark register shall be published in the Office official gazette.
(3) The data to be contained in the request for the entry of any change relating to a trademark shall be prescribed by the Regulations.
38.—(1) 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.
(2) 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.
(3) 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.
(4) The request for the entry of the transfer of rights in the register shall be filed as prescribed by the Regulations.
39.—(1) A trademark may be licensed for some or all of the goods or services for which it is registered and for the whole or part of the territory of the Republic of Croatia.
(2) A licence may be exclusive or non-exclusive.
(3) The holder of a trademark may invoke the rights conferred by the trademark against a licensee who contravenes any provision in the licensing contract with regard to its duration, the form covered by the registration in which the trademark may be used, the scope of the goods or services for which the licence is granted, the territory in which the trademark may be affixed, or the quality of the goods manufactured or of the services provided by the licensee.
(4) Without prejudice to the provisions of the licensing contract, the holder of a non-exclusive licence may bring proceedings for infringement of a trademark only if the holder of the trademark consents thereto.
(5) Without prejudice to the provisions of the licensing contract, the holder of an exclusive licence may bring proceedings for infringement of a trademark if the holder of the trademark, after formal notice, does not himself bring infringement proceedings within an appropriate period.
(6) On request of one of the parties, the licence shall be entered in the register if a certified copy of the licensing contract, or the certified part of the contract, or the original certificate of granting the licence signed both by the holder of the trademark and the licensee is submitted to the Office.
(7) If the prescribed fee and procedural charges are paid, the licence shall be published in the Office official gazette and it shall have effect against third parties after the entry thereof in the register.
(8) The request for the entry of the licence in the register shall be filed as prescribed by the Regulations.
Rights in Rem and Levy of Execution
40.—(1) A trademark may be subject to the rights in rem and levy of execution.
(2) On request of one of the parties, the rights in rem and levy of execution shall be entered in the register.
(3) Rights in rem and levy of execution shall be published in the Office official gazette and shall have effect against third parties after the entry thereof in the register.
(4) The request for the entry of the rights in rem or levy of execution in the register shall be filed as prescribed by the Regulations.
41. Where a trademark is involved in bankruptcy proceedings, on request of the competent authority an entry to this effect shall be made in the register and published.
Rights Conferred by an Application
42. Articles 38 to 41 of this Law shall also apply to applications for registration of a trademark.
Part Seven
Duration, Renewal and
Ceasing of Effects of a Trademark
43. The period of protection of a registered trademark lasts ten years counting from the date of filing of the application for registration of a trademark.
Renewal of the Registration of a Trademark
44.—(1) The registration of a trademark may be renewed indefinite number of times, for the periods of ten years each, provided that the holder of the trademark files with the Office a request for renewal of the registration of the trademark and pays the prescribed fee and procedural charges in the course of the last year of the ten-year period of protection.
(2) The request for renewal of the registration of a trademark may be submitted and the 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.
(3) The new period of protection shall begin with the day of expiry of the previous ten-year period.
(4) The request for renewal of the registration of a trademark may be filed by the holder of the trademark or a person expressly authorized by him.
(5) Where the request for renewal of the registration of a trademark is filed in respect of only some of the goods or services for which the trademark is registered, registration shall be renewed for those goods or services only.
(6) The renewal of the registration of a trademark shall be entered in the register and published in the Office official gazette.
(7) If the registration is not renewed, the trademark shall cease to have effect from the day of expiry of the period of protection.
(8) The data to be contained in the request for the renewal of the registration of a trademark shall be prescribed by the Regulations.
45.—(1) The holder of a trademark may, in writing, declare the surrender of the trademark in respect of some or all of the goods or services for which it is registered.
(2) If a licence has been entered in the register, surrender of the trademark shall only be entered in the register if the holder of the trademark proves that he has informed the licensee of his intention to surrender the trademark.
(3) On the basis of the declaration of surrender, the trademark shall cease to have effect from the day of submitting the declaration of surrender.
46.—(1) The request for revocation of a trademark may be filed with the Office by any natural or legal person.
(2) A trademark may be revoked if, within a continuous period of five years, it has not been put to genuine use in the Republic of Croatia in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
(3) A trademark may also be revoked if, after the date on which it was registered,
– in consequence of acts or inactivity of the holder, it has become the common name in the trade for a product or service in respect of which it is registered,
– in consequence of the use made of it by the holder of the trademark or with his consent, in respect of the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
(4) The request for revocation of a trademark shall be filed as prescribed by the Regulations.
47.—(1) The Office shall examine whether the request for revocation of a trademark is filed in accordance with Article 46 of this Law.
(2) If the request for revocation of a trademark is filed before the expiry of the period of five years from the registration of the trademark the revocation of which is requested, and if it is not filed on the grounds specified in Article 46 (2) and (3), the Office shall issue a decision on the rejection of the request.
(3) If the request for revocation of a trademark is not filed as prescribed by the Regulations, the Office shall invite the person who filed the request to remedy the deficiencies in the request within 60 days from the day of receipt of the invitation.
(4) If the person who filed the request for revocation of a trademark does not, within the prescribed time limit, comply with the invitation sent by the Office and does not remedy the deficiencies in the request within the meaning of paragraph (3) of this Article, the request shall be rejected by a decision.
(5) If the requirements set out in paragraph (1) of this Article are complied with, the Office shall notify the holder of the trademark of the request for revocation of the trademark, send him a copy of the request and invite him to submit his observations on the request within 60 days from the day of receipt of the invitation.
(6) On request, the time limits laid down in paragraphs (3) and (5) of this Article may be extended for not more than 60 days.
(7) If the holder of the trademark in respect of which the revocation is requested does not submit his observations on the request within the prescribed time limit, the trademark shall be revoked for those goods or services in respect of which the request was filed.
(8) If the Office considers that oral proceedings are necessary in the revocation procedure, they shall be held at the instance of the Office.
Examination of the Request
for Revocation of a Trademark
48.—(1) If the holder of the trademark in respect of which the revocation is requested submits his observations on the request within the prescribed time limit, the Office shall examine the justification of the grounds specified in the request for revocation of the trademark.
(2) In the examination procedure concerning the request for revocation of a trademark the Office may invite the parties to submit additional evidence, documentation and observations within 60 days from the day of receipt of the invitation.
(3) On request, the time limit laid down in paragraph (2) of this Article may be extended for not more than 60 days.
(4) If the party in the procedure does not respond to the invitation referred to in paragraph (3) of this Article within the prescribed time limit, the Office shall make a decision on the basis of the facts available from the earlier submitted documentation.
(5) It may not be requested that a trademark should be revoked where genuine use of the trademark has been started or resumed during the interval between expiry of the five-year period of non-use and filing of the request for revocation.
(6) The commencement or resumption of use within a period of three months preceding the filing of the request for revocation, which began, at the earliest, on expiry of the continuous period of five years of non-use, shall be disregarded where preparations for the commencement or resumption occur only after the holder becomes aware that the application for revocation may be filed.
(7) If, in the examination procedure concerning the request for revocation of a trademark, the Office finds that the request is unjustified, the request shall be refused and the decision to that effect shall be sent to the person who has filed the request and to the holder of the trademark in respect of which the revocation is requested.
(8) If, in the examination procedure concerning the request for revocation of a trademark, the Office finds that the request is justified, the trademark shall be revoked in full or partially and the decision to that effect shall be sent to the person who has filed the request and to the holder of the trademark in respect of which the revocation is requested.
(9) When a trademark is revoked it shall be deemed that its effects ceased from the date of the filing of the request for revocation.
(10) The revocation of a trademark shall be entered in the register and published in the Office official gazette.
Declaration that the Trademark is Invalid
49.—(1) The procedure for a declaration that a trademark is invalid shall be carried out by the Office.
(2) If the trademark was not registered in accordance with the provisions of Article 3 (1) and Article 5 (1) of this Law, the procedure for a declaration that a trademark is invalid may be initiated ex officio, on request of the state attorney or on request of an interested person.
(3) On the grounds from Article 6 of this Law, which shall also apply to the procedure for a declaration that a trademark is invalid, the procedure for a declaration that a trademark is invalid may be initiated:
1. within the meaning of Article 6 (1) and (3) of this Law, on request of the holder of an earlier trademark and the licensee in accordance with Article 39 (4) or (5) of this Law,
2. on request of the holder of an earlier right referred to in Article 6 (4) of this Law,
3. on request of the person who had a firm within the meaning of Article 6 (6) of this Law,
4. on request of the holder of an earlier trademark within the meaning of Article 6 (7) of this Law.
(4) Where a trademark has not been registered in accordance with the provisions from Article 5 (1) 2., 3. or 4. of this Law, it may only be declared invalid if the procedure for a declaration that the trademark is invalid has been initiated within a period of ten years from the date of registration.
(5) A trademark may not be declared invalid on the grounds of an earlier trademark with a reputation if the earlier trademark has not acquired the reputation within the meaning of Article 6 (3) of this Law before the date of priority right of the later trademark.
(6) Where the holder of one of the rights referred to in paragraph (3) of this Article has previously filed a request for a declaration that a trademark is invalid, he may not file a new request for a declaration that a trademark is invalid on the basis of another of the said rights which he could have invoked in support of his first request.
(7) If, on the date of filing of the request for a declaration that a trademark is invalid, the earlier trademark on which the request is based is subject to a pending revocation procedure or a pending procedure for a declaration that the trademark is invalid, the Office shall suspend the procedure until the decision from the earlier initiated revocation procedure or the procedure for a declaration that the trademark is invalid has become final.
(8) The request for a declaration that a trademark is invalid shall be filed as prescribed by the Regulations.
Procedure Concerning the Request
for a Declaration that a Trademark is Invalid
50.—(1) The Office shall examine whether the request for a declaration that a trademark is invalid is filed in accordance with Article 49 (3), (4), (5), (6) and (8) of this Law.
(2) If the request for a declaration that a trademark is invalid is not filed in accordance with Article 49 (3), (4) and (6) of this Law, the Office shall issue a decision on the rejection of the request.
(3) If the request for a declaration that a trademark is invalid is not filed as prescribed by the Regulations, the Office shall invite the person who filed the request to remedy the deficiencies in the request within 60 days from the day of receipt of the invitation.
(4) If the person who filed the request does not, within the prescribed time limit, comply with the invitation sent by the Office and does not remedy the deficiencies in the request within the meaning of paragraph (3) of this Article, the request shall be rejected by a decision.
(5) If the requirements set out in Article 49 of this Law are complied with, the Office shall notify the holder of the contested trademark of the initiated procedure for a declaration that the trademark is invalid, send him a copy of the request and invite him to submit his observations on the request within 60 days from the day of receipt of the invitation.
(6) On request, the time limits laid down in paragraphs (3) and (5) of this Article may be extended for not more than 60 days.
(7) If the holder of the contested trademark does not submit his observations on the request for a declaration that the trademark is invalid within the prescribed time limit, the trademark shall be declared invalid for those goods or services in respect of which the procedure was initiated.
(8) If the Office considers that oral proceedings are necessary in the procedure concerning the request for a declaration that a trademark is invalid, they shall be held at the instance of the Office.
Examination of the Request for a Declaration that a Trademark is Invalid
51.—(1) If the holder of the contested trademark submits his observations on the request for a declaration that a trademark is invalid within the prescribed time limit, the Office shall examine the justification of the grounds specified in the request.
(2) Where a trademark has not been registered in accordance with Article 3 (1) and Article 5 (1) of this Law, the trademark shall be declared invalid only if the grounds for declaration that a trademark is invalid still exist at the time when the decision on the request for a declaration that a trademark is invalid is made.
(3) Where a trademark has not been registered in accordance with Article 5 (1) 2., 3. or 4. of this Law, it shall not be declared invalid if the holder of the trademark proves that the trademark has, after 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 it is registered.
(4) A trademark may not be declared invalid where the holder of the right referred to in Article 49 (3) of this Law consented expressly to the registration of that trademark before filing of the request for a declaration that a trademark is invalid.
(5) A trademark may not be declared invalid on the ground that there is an earlier conflicting trademark if this earlier trademark does not fulfil the requirements of use set out in Article 13 (2) to (4), provided the earlier trademark has, on the date of filing the request for a declaration that a trademark is invalid, been registered for not less than five years.
(6) If the earlier trademark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the request for a declaration that a trademark is invalid, be deemed to be registered in respect only of that part of the goods or services.
(7) In the examination procedure concerning the request for a declaration that a trademark is invalid the Office may invite the parties to submit additional evidence, documentation and observations within 60 days from the day of receipt of the invitation.
(8) On request, the time limit laid down in paragraph (7) of this Article may be extended for not more than 60 days.
(9) If the party in the procedure does not respond to the invitation within the prescribed time limit, the Office shall make a decision on the basis of the facts available from the earlier submitted documentation.
(10) If, in the examination procedure concerning the request for a declaration that a trademark is invalid, the Office finds that the request is unjustified, the request shall be refused and the decision to that effect shall be sent to the person who has filed the request and to the holder of the contested trademark.
(11) If, in the examination procedure concerning the request for a declaration that a trademark is invalid, the Office finds that the request is justified, the trademark shall be declared invalid in full or partially and the decision to that effect shall be sent to the person who has filed the request and to the holder of the contested trademark.
(12) When a trademark is declared invalid, the effects of that trademark shall be deemed to have been invalid as from the day of filing the application for registration of the trademark
(13) The declaration that a trademark is invalid shall be entered in the register and published in the Office official gazette.
Partial Refusal of Registration of a Trademark, Revocation of a Trademark or
Declaration that a Trademark is Invalid
52. Where grounds for refusal of registration of a trademark or for revocation of a trademark or for 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 registration or revocation or declaration that a trademark is invalid shall cover those goods or services only.
Part Eight
Collective and Guarantee Mark
53. Any sign within the meaning of Article 2 of this Law may be protected as a collective mark if it is described as such in the application for registration of the mark and if it 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 if it is intended for collective designation of the goods or services put on the market by the members or the partners of that legal person.
54. Any sign within the meaning of the Article 2 of this Law may be protected as a guarantee mark if it 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 mark and use that mark.
Special Provisions on Collective Marks
and Guarantee Marks
55.—(1) The provisions of this Law and the Regulations shall apply to collective marks and guarantee marks, unless this part of the Law provides otherwise.
(2) In derogation from the provision of the Article 5 (1) 3. of this Law, signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may be protected as a collective mark.
(3) The mark referred to in paragraph (2) shall not entitle the holder to prohibit a third party from using in the course of trade signs or indications specified in paragraph (2) of this Article, provided he uses them in accordance with established and honest practices in industrial or commercial matters. In particular, such a mark may not be invoked against a third party who is entitled to use a geographical name.
Persons who May Be Holders of a Collective Mark
56. Holders of a collective mark or applicants for registration of a collective mark may be legal persons and associations of manufacturers, suppliers of services, or traders which have the capacity in their own name to have rights and obligations, to make contracts or accomplish other legal acts.
57. A contract on a collective mark shall be filed with the application for 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 infringement in the case of misuse of the collective mark, or the breach of the provisions of the contract.
58. Any person who has authority to use a collective mark shall be entitled to use it, provided that the other requirements, which this Law prescribes with regard to the use of marks, are complied with.
Amendments of the Contract
Governing Use of the Collective Mark
59.—(1) The holder of a collective mark must submit to the Office all the amendments of the contract relating to the use of the collective mark.
(2) Amendments of the contract governing use of the collective mark shall have effect against third parties after the entry thereof in the register.
Part Nine
Protection of Trademarks Under the Madrid Agreement Concerning
the International Registration of Marks and
the Protocol Relating to the Madrid Agreement
Special Provisions on International Registrations of Marks
60. The provisions of this Law 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 Law provides otherwise.
Filing of the International Application and the Request for Recording
of a Change in the International Register
61.—(1) International applications and requests for recording of a change in the International Register shall be filed with the Office as prescribed by the Madrid Agreement, the Protocol, the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (hereinafter: “the Common Regulations”) and the Regulations on Trademarks.
(2) If the international application or a request for recording of a change in the International Register is not filed as prescribed by the Madrid Agreement, the Protocol, the Common Regulations and the Regulations on Trademarks, the Office shall invite the applicant or the person who filed the request to remedy the deficiencies in the application or the request within 30 days from the day of receipt of the invitation.
(3) On request, the time limit laid down in paragraph (2) of this Article may be extended for not more than 60 days.
(4) If the international application is filed in accordance with paragraph (1) of this Article and if the prescribed fee and procedural charges are paid, the Office transmits the application to the International Bureau of the World Intellectual Property Organization (hereinafter: “the International Bureau”).
(5) If the applicant 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.
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
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 registration.
Refusal of Protection to the International Registration of a Mark
64. For the holder of an international registration of a mark the time limit laid down in Article 24 (2) of this Law shall be replaced by four months from the date of the notification of refusal.
Opposition to the International Registration of a Mark
65.—(1) For the purposes of international registrations of marks under the Madrid Agreement and the Protocol, the publication of the application prescribed in Article 25 of this Law shall be replaced by publication in the official gazette of international registrations of marks published by the International Bureau (hereinafter: the international official gazette).
(2) The time limit for filing the opposition to an international registration of a mark shall run from the first day of the month following the month indicated on the edition of the international official gazette in which such mark has been published.
(3) In the procedure concerning the opposition to an international registration of a mark, the Office, in accordance with the Madrid Agreement and the Protocol, sends to the holder of the international registration of a mark a notification of provisional refusal on the basis of the opposition and invites him to appoint a representative who, within four months from the date of the notification of refusal, has to 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
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 registration shall be considered to be the date on which the period according to Article 5 (2) of the Madrid Agreement or Article 5 (2)(a) of the Protocol expired or, if the procedures of granting protection or an opposition procedure have not yet been concluded upon expiry of this period, the date of the notification concerning the final decision of the Office on 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
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.
(2) The time limit referred to in paragraph (1) of this Article shall not be extended.
(3) A copy of the request shall be sent to the representative after filing of the power of attorney. The time limit for submitting the observations on the request is 60 days from the day of receipt of the copy of the request by the representative.
(4) On request, the time limit laid down in paragraph (3) of this Article may be extended for not more than 60 days.
(5) In the procedure for revocation of an international registration of a mark, for the purposes of proving the use of a mark, the date of registration shall be considered to be the date specified in Article 66 of this Law.
Part Ten
Common Provisions Relating to the Procedure before the Office
Other Regulations Applied in
the Procedure before the Office
68. The Law on the General Administrative Procedure (“Narodne novine”—the Official Gazette of the Republic of Croatia, No. 53/91) shall apply to particular matters relating to the procedure, not regulated by this Law.
69.—(1) The procedures prescribed by this Law shall be subject to the payment of fees and procedural charges in compliance with the special provisions.
(2) If the fee or procedural charges referred to in paragraph (1) of this Article have not been paid, an application or a request shall be rejected, and in the case of non-payment of the fee or procedural charges for the renewal of a trademark, the trademark shall lapse.
70. On request of the applicant 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.
71.—(1) The Office shall keep the trademark register which contains the data, the entry of which is prescribed by this Law and the Regulations.
(2) Any person is entitled to inspect the trademark register.
(3) On request of any interested person, and after the prescribed fee and procedural charges have been paid, the Office shall issue the extract and the attestation from the trademark register.
72. The Office shall publish the official gazette containing all the data the publication of which is prescribed by this Law and the Regulations.
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
74.—(1) Natural or legal persons not having a domicile nor a real and effective industrial or commercial seat in the Republic of Croatia may exercise rights arising from this Law in the procedures before the Office only through authorized representatives.
(2) General principles of representation, and special conditions under which the persons specified in paragraph (1) of this Article may exercise rights arising from this Law shall be regulated by special regulations.
Action Concerning the Infringement of Rights
75.—(1) The holder of a trademark, if his rights referred to in Article 7 of this Law have been infringed or threatened to be infringed, may, by instituting an action, require from the appropriate court:
1. establishment of the existence of the infringement of a trademark,
2. prohibition of the committed or intended infringement of a trademark,
3. elimination of a condition caused by the committed infringement of a trademark,
4. ordering to the defendant to inform of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution.
5. compensation for damage,
6. publication of the court decision at the expense of the defendant.
(2) The imitation of a trademark, as well as the use of a collective mark and a guarantee mark contrary to the contract on the collective mark or guarantee mark, shall also be considered to be the infringement of a trademark within the meaning of paragraph (1) of this Article.
(3) The proceedings concerning the action within the meaning of paragraph (1) of this Article shall be urgent.
76.—(1) On the request of the plaintiff, the court may order the destruction of objects unlawfully designated by a trademark, which are in the possession of a defendant.
(2) The court shall decide whether the objects unlawfully designated by a trademark are to be destroyed, made unrecognizable or used in any other way.
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 from the commitment of the infringement.
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 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 shall have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable harm to the holder of a trademark, or where there is a demonstrable risk of evidence being destroyed.
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 Law 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.
Part Twelve
Provisions Concerning Misdemeanours
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 supplying services or on business papers and in advertising, without the authorization, shall be punished for the misdemeanour by a fine amounting from 20.000,00 up to 100.000,00 kunas (Article 7).
(2) The natural person shall be punished for a misdemeanour referred to in paragraph (1) of this Article by a fine amounting from 2.000,00 up to 8.000,00 kunas.
(3) The responsible person in the legal person shall be punished for a misdemeanour referred to in paragraph (1) of this Article, by a fine amounting from 5.000,00 up to 10.000,00 kunas.
(4) Articles intended or used for the committed misdemeanours 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.
Part Thirteen
Transitional and Final Provisions
Pending Procedures Concerning
Applications for Registration of a Trademark
81. Procedures concerning applications for registration of a trademark pending on the day the application of this Law starts, shall be carried out in compliance with the provisions of this Law.
82.—(1) The procedures concerning the infringement of a trademark or the rights conferred by a trademark application pending on the day the application of this Law starts, shall be carried out in compliance with the provisions which were in force up to the day the application of this Law starts.
(2) The procedures concerning the declaration of the decision on the grant of a trademark null and void and the procedures concerning ceasing of effect of a trademark due to non-use pending on the day the application of this Law starts, shall be carried out in compliance with the provisions which were in force up to the day the application of this Law starts.
83. On the proposal of the director of the Office, the competent minister shall define, by the Regulations, matters referred to in: Article 15 (3), Article 21 (1), Article 25 (2), Article 27 (4), Article 33 (3), Article 34 (2), Article 35 (2), Article 37 (3), Article 38 (4) Article 39 (8), Article 40 (4), Article 44 (8), Article 46 (4), Article 49 (8), Article 61 (1), Article 71 (1) and Article 72 of this Law.
Ceasing of the Validity of Other Provisions
84. On the day application of this Law starts, The Law on Trademarks (“Narodne novine”—the Official Gazette of the Republic of Croatia, 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.
85. This Law shall enter into force on the eighth day from the date of its publication in “Narodne novine”—the Official Gazette of the Republic of Croatia, and shall be applied as from January 1, 2004. 1 31/10/03