03-12-2013 (Newsletter Issue 3/13)EU Trademark and Design RegulationsAs a result of Croatia’s approaching accession to the European Union on July 1, 2013, EU’s trademark and design regulations will enter into force in Croatia and all registered EU trademarks and designs will automatically extend to the new EU member state.
According to the notification recently issued by the Office for Harmonization in the Internal Market (OHIM), Community Trademark (CTM) applications filed from January 1, 2013 to June 30, 2013, or during six months prior to Croatia’s date of accession, may be opposed by a Croatian trademark owner, if the filing or priority date of the Croatian trademark is earlier than the filing or priority date of the opposed CTM application and if the national mark was applied for in good faith.
In June 2010, the OHIM started the internal preparations, which include translation of official documents and databases into Croatian and recruitment of staff from the new EU state. After Croatia joins the EU, it will be possible to submit trademark and design applications in Croatian.
The effects of the enlargement in terms of the proceedings before OHIM are thoroughly covered in OHIM’s manual.
01-23-2012 (Newsletter Issue 1/12)To Join the EUCroatia applied for the European Union membership and signed the Accession Treaty on December 9, 2011 to become a member. Subject to the Treaty's ratification by all Member States and Croatia, the country will become the 28th Member State of the European Union on July 1, 2013. A referendum on the EU accession was held in Croatia on 22 January 2012. It passed with more than 60 percent votes cast in support of the accession.
Croatia’s membership of the European Union brings with it implications for the Community trade mark and designs systems and the Treaty outlines that all CTMs and RCDs registered in Member States before the date of accession shall be extended to the territory of Croatia on the day of accession.
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02-07-2011 (Newsletter Issue 2/11)
Ratification of Singapore Treaty
The Director General of the World Intellectual Property Organization (WIPO) notifies that Croatia will ratify to the Singapore Treaty with effect on April 13th, 2011.
Legal basis is the Trademark Act of October 29th, 2003, in force since January 1st, 2004 and its amendments of July 2007, March 2009 and April 2011, together with the Trademark Regulations in force since November 14th, 2007, and its amendment of June 2011.
Croatia is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. Croatia is a first to registered country, by maxim “first come first served”. It is very difficult to enforce unregistered IP rights in Croatia. Publicly recognized marks could be protected via unfair competition provisions.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks and certification marks.
The application is filed at the Croation State Intellectual Property Office (CSIPO). Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants that enjoy protection via International registrations designating Croatia do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and on other absolute grounds. Prior trademarks or prior IP rights are not examined ex officio by the CSIPO.
The processing time from first filing to registration is approx. 9 to 12 months. The first office action is taken after approx. 1 to 2 months.
After the official examination on absolute grounds, and before the registration, the application is published in the Croatian Intellectual Property Gazette (Hrvatski glasnik intelektualnog vlasništva), issued on the last day of every month.
The opposition period is 3 months from publication of the trademark application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
3 months. Starting from the first day of the month following the month indicated in the WIPO Gazette (non-extendable).
Protection begins with the date of application. A trademark registration is valid for 10 years.
The registration is renewable for periods of 10 years.
If the trademark has not been used within 5 years from registration or has not been used later for a continuous period of 5 years, it may be subject to cancellation.
The official fee is approx. EUR 105.00 for up to three classes including publication and approx. EUR 25.00 for each additional class.
Trademark Licence Agreement
A trademark licence agreement has to be in writing. Licensing of unregistered marks is permitted. A trademark can be licensed for all or some of the goods or services covered and for all or part of the Republic of Croatia. Licences may be exclusive or non-exclusive. Under an exclusive licence, the licensor may not, in any manner, utilise the licensed mark, or entrust it to another person in the respective territory. The sale of a registered trademark does not automatically terminate the licence.
The following statutory provisions prescribe the terms of licensing:
1. The licensor guarantees that he is the rights holder.
2. The licensee must use the licensed trademark in the agreed manner, scope and territory.
3. In the event that secret know-how is involved, the licensee shall be obliged to keep this secret
4. In the event that a trademark licence is given in addition to a production licence, the licensee is obliged to guarantee an adequate quality of the licensed goods.
5. A licensee shall mark the goods with the trademark and indicate that they are produced under licence
There are provisions in law for the recordal of a licensee. The recordal is voluntary, but the licence becomes effective and enforceable against third parties only after its entry in the Register. It can be initiated by either of the parties. There is no time frame for a recordal and no standard form or content for a licence agreement.
The following document is required for a recordal:
1. A copy of the licence contract (or a certified abstract or the original agreement), signed by both parties
The licence agreement becomes effective and enforceable against third parties from the date of its entry into the Register and is published in the following issue of the Croatian Intellectual Property Gazette.
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings and may call upon the owner to institute such proceedings. Without prejudice to the provisions of the contract, the holder of an exclusive licence may institute proceedings for the infringement of a trademark, if the proprietor, after a formal notice, does not himself institute infringement proceedings within an appropriate period. The non-exclusive licensee may institute infringement proceedings only if the licensor consents thereto. The licensee is required to cite the trademark owner as co-defendant in any such proceedings.
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