Key differences between trademark regimes in Slovenia and Croatia

With growing economies and lively markets, countries in the Balkans region are earning a well-deserved place on the radars of international brand owners. It is thus more important than ever for them to understand crucial differences – and similarities – between different trademark regimes.

Unique features of Slovenian trademark regulations

The protection of industrial property was first handled by the Ministry of Science and Technology in 1991, when Slovenia separated from Yugoslavia and became a member of WIPO. Since December 2000, the Slovenian Intellectual Property Office (SIPO) has operated as an autonomous body within the Ministry of the Economy.

Slovenia is now a contractor to and member of several international organisations and agreements, including:

• the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs);
• the Paris Convention;
• the Nice Agreement on the International Classification of Goods and Services,
• the Madrid System for International Trademark Registration;
• the Hague Agreement on the International Registration of Industrial Designs; and
• the European Patent Office (EPO).         

Since March 2020, there has been no graphical representation requirement for trademarks. In addition, Slovenia has now implemented most of the provisions of the EU Trademarks Directive (2015/2436) into national law. This has opened the door to the registration of more types of non-traditional trademarks, such as holograms or movement marks.

Also since 2020 the holder of an earlier trademark cannot enforce their rights against the holder of a more recent trademark if the former was aware of the latter’s trademark and tolerated its use in the market without opposition for five consecutive years.

Trademarks can be renewed one year before expiration, at the earliest, with a grace period is six months. SIPO decisions are final and can be challenged only before the courts; this applies especially to cancellation actions and annulment procedures. The Ljubljana District Court has exclusive jurisdiction to decide on enforcement and invalidity actions at first instance; if needed, the second-instance court is the High Court of Ljubljana.

Power of attorney for all IP matters must be signed with the full name and position of the signatory at the authorising entity – notarisation or legalisation is not required.

Unique features of Croatian trademark regulations

Croatia gained its independence from Yugoslavia in 1991, when it also became a member of WIPO. However, the national tradition of protecting intellectual property dates back to the 19th century, when Croatia was part of the Austro-Hungarian empire. The country’s present IP Office was founded on 31 December 1991, after the Republic of Croatia gained independence.

In addition to WIPO, Croatia is also a contractor to and a member of several international organisations and agreements, including:

• the TRIPs agreement;
• the Paris Convention; 
• the Nice Agreement;
• the Hague Agreement;
• the Madrid System;
• the Patent Cooperation Treaty; and
• the EPO.

In Croatia, it is possible to request an accelerated trademark availability search on payment of an additional 50% higher fees; the results are issued in three working days by the IP Office.

Official fees for trademark applications, registrations and renewals cover one class only, with fresh fees for every additional class. This is in contrast to almost all other jurisdictions in the Balkans (apart from Albania), where the basic fee covers three classes.

In 2019 a new law paved the way for the registration of new types of trademarks, including position, pattern, sounds, motion and multimedia marks that do not have to be exclusively graphically represented, as was previously the case. 

Trademarks can be renewed one year prior to the renewal deadline at the earliest, with a grace period of six months.

If the renewal fees are unpaid by the expiration date, they increase by 100% during the grace period

In Croatia, power of attorney for all IP matters must be signed by the authorised person with their full name, position and place of signing – notarisation or legalisation is not required.