World Patent Information, Vol. 14, No. 4, pp. 266-270, 1992 0172-2190/92$5.00+.00 Printed in Great Britain Pergamon Press Ltd

0 1992 CECiWIPO

Recent Developments of Intellectual Property Rights Protection in Croatia

Mladen Vukmir, Attorney at Law, Gornje Prekrizje 51, 4100 Zagreb, Croatia

Summary

An act for the protection of industrial property has been passed in Croatia. It is based on the former Yugoslavian law and the author discusses the differences between the two.

Croatian Parliament recently passed two legislative texts relevant to the protection of intellectual property rights. First is the Act on Changes and Amendments to the Act on the Republic Adminis- tration (Zakon o izmjenama i dopunama Zakona o ustrojstvu republiEke uprave, Narodne Novine, No. 73, 31 December 1991). This law, and in particular its articles 9 (27b) and 10, provide for the institution of a Croatian Industrial Property Office (RepubliCki zavod za industrijsko vlasnis’tvo). The second law is the Croatian Industrial Property Act (Act on Changes and Amendments of the Law on the Protection of Inventions, Technical Improvements and Distinctive Signs, Narodne Novine, No. 19, 2 April 1992).

Copies of both laws, together with my translations, are annexed to this information sheet. The first act, Annex 1, which provides for the institution of an Industrial Property Ofice is self-explanatory, and I shall not comment on its provisions. Although the text of the Industrial Property Act (Annex 2) should be sufficiently clear if read in conjunction with the translation of the former Yugoslav federal Law on the Protection of Inventions, Technical Improvements and Distinctive Signs (as published in the WIPO publication Industrial Property July/August 1991), it may still be useful to summarize its content. I shall try to emphasize the most important or most complex points of the Act, as well as to outline its effects on the present Croatian intellectual property system.

The most notable effect of the enactment of the Act is that Croatia set the conditions for the functioning of its own patent system. The system is largely based on the former federal Law on the Protection of Inven- tions, Technical Improvements and Distinctive Signs (hereinafter the Law or Federal Law). It could be said that the present Croatian patent system does not differ in any significant way from the former federal patent system. The intention here was, presumably, to assure the smoothest possible transition from one

patent system to the other, protecting the industrial property rights holders at the same time. The bulk of the present changes are rooted in the sheer facts of the independence of the Republic of Croatia and of the founding of its own Industrial Property Office. Accordingly, it is reasonably safe to predict that there will be further changes to the new system in the future.

The clear line followed by the legislator in bringing in the changes was increasing the user-friendliness of the old legislation on certain critical points. Examples of this approach may be found throughout the Act. For instance, article 3 of the Act provides for change to article 15, paragraph 2 of the Law. The burden of proof regarding the evidence of reciprocity for the event of the judicial dispute including a foreign liti- gant is shifted from the party invoking the reciprocity to the party alleging the absence of the reciprocity. In other words, while old Federal Law required the evidence of reciprocity, the new Act establishes the presumption of reciprocity unless proved otherwise. Doubtlessly, this is a point of potential interest for foreign rights holders.

A further example of such legislative user-friendliness is to be found in article 8 of the Act which amends article 117 of the Law. This change relates to article 6 of the Act deleting provisions 77a and 77b of the former Federal Law regulating the issue of the postponed patentability for the patents for medical substances and for the use of the medical substances. In effect, the new provision diminishes the impact of the non-patentability provision of medical substances for treatment of humans and animals and the modes of use for such medical substances (provided for in article 77a of the Law) which postponed patentability of such inventions until 31 December 1992.

Article 8 of the Act remedies the negative effects of non-patentability by allowing the holders of such rights to compensate their loss for the period. This right of remedy is limited only by the right of the courts to determine the damages in an amount less than that claimed by a successful plaintiff. By setting this limit the legislator took into account the interest of the local producers who relied on the protection given by the adaptation period provided by the former Federal Law until the beginning of 1993. The legislator based his approach on the opinion

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Intellectual Property Rights in Croatia

that it would be unfair to impose the obligation to compensate full damages for the infringement of the rights created retroactively.

The law also provides for the register of authorized patent agents and regulates the issue in articles 9 and 14 by changing and amending article 172a of the Law.

Substantial provisions are added by articles 10, 11 and 12

In particular, these articles deal with the problems of the legislative vacuum on the territory of Croatia created in the field of intellectual property rights by the break-up of the former Federation. The articles provide an explicit solution to the issue of validity of the rights granted by the former Federal Patent Office (hereinafter FPO) on the territory of the Republic of Croatia. They also provide a solution to the issue of the applications for the industrial property rights at the former FPO which were never granted due to the outbreak of the hostilities and the subsequent break-up of the Federation.

Article 10 of the Act provides for full and unlimited recognition of all rights granted by the former FPO on the territory of the Republic of Croatia. This is to say that all former Yugoslav industrial property rights shall be fully recognized in Croatia. Such rights may be inscribed in a registry with the new Croatian Industrial Property Office (hereinafter IPO or CIPO) upon the request of its holder. Once inscribed in the Croatian Registry the rights shall be considered equal to Croatian patents, trademarks or design rights, and shall exist in Croatia completely independently from the life of the Yugoslav patent.

For example, it means that if a patent issued by the former FPO is invalidated in a court of the other former Yugoslav Republic, the same right shall not be automatically invalidated in Croatia.

It is important to emphasize that the effect of the registration in Croatia bears no consequence what- soever regarding the validity, scope or duration of the intellectual property right granted by the former FPO. The incentive to register the right with the CIPO stems from the fact that the holder of such right shall be able to maintain the right in Croatia independently, without having to address itself to the former FPO in Belgrade.

Once again, in the user-friendly spirit of the new legislation, paragraph 3 provides for the rights that shall not be inscribed in the new register, and in the event of the conflict of the former Federal Law and the new Croatian Industrial Property Act, the latter shall prevail if more favorable for the holder of the industrial property right.

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Article 11 provides for the exclusive jurisdiction of the Croatian courts for the contests of validity of the rights recognized on the territory of the Republic of Croatia. The legislator had in mind possibilities given in our example above, that the same former Federal industrial property right may be invalidated by the court in another former Yugoslav Republic which in the meantime became an independent state.

Additional assurances are given to foreign rights holders by article 12 of the Act. In its paragraph 1 this article guarantees on the territory of Croatia all rights arising from the international conventions and treaties ratified by SFR Yugoslavia before 8 October 1991* to the foreign natural and legal persons. It should be mentioned that the Republic of Croatia, in its Declaration of Independence, solemnly stated its position to respect all of the international treaties and conventions to which the former Yugoslav Federation was a Member.

In this way, the questions about the validity of former Yugoslav industrial property rights in Croatia in light of the break-up of the Federation are explicitly and sufficiently answered. It might be said that they are answered in a way that should remove any doubt about the willingness of the new Croatian State to respect the interests of foreign industrial property rights holders. In effect, this paragraph establishes the unilateral obligation of the Republic of Croatia to respect the international treaties to which the former Federation adhered, even before being recognized or admitted to them as a party.

The remaining paragraphs of this article are im- portant as they provide the legal regime for the applications submitted during the period before the CIPO had started its operation.

Paragraph 2 addresses domestic applicants in a way that guarantees the priority rights in Croatia to the inventors who submitted their applications in the countries Members of the International Union for the Protection of Industrial Property. The priority right shall have the duration of 12 months for patents and six months for trademarks and design rights, respectively.

Paragraph 3 addresses applicants whose first appli- cations have been submitted to the former FPO, or are invoking a priority right based on an application in a Member State of the International Union for the Protection of Industrial Property. This paragraph allows such applicants to submit the same application within six months of the original date of application if their priority right expired before the Act came into force.

*8 October 1991, referred to at several points in the Act, is the date when the Declaration of Independence of the Republic of Croatia took effect.

268 M. Vukmir

Finally, article 13, of the Act suspends the provision of article 14 of the Law. This article means permission must be obtained from the Office before applying for the patent protection abroad (for enterprises applying for patents and trademarks), and a waiting period of three months after application at the Office (for enterprises and Croatian citizens applying for patents). This article shall not apply unless the Government of Croatia decides to bring into effect its provisions by a special decree.

Appendix 1

Republic of Croatia

ACT ON CHANGES AND AMENDMENTS OF THE ACT ON REPUBLIC ADMINISTRATION

Source: “Narodne Novine”, No. 73 31 December I992

Entry in force: 31 December 1992

I am proclaiming the Law on the Protection of Inventions, Technical Improvements and Distinctive Signs, applied in the Republic of Croatia as a Croatian Law, and was enacted by Sabor [the Parliament] of the Republic of Croatia at the sessions of the Council of the Associated Labour on 26 March 1992, The Council of the Communes on 26 March 1992, and the Social and Political Council on 26 March 1992.

Translation: unofficial, by M.V

Excerpts from the Text:

Number: PA4-10/l-92 The Signature of the President Zagreb, March 31, 1992 of the Republic of Croalia

(. .) ACT

Article 9

New Articles 27b and 27c shall be added behind Article 27 with the following text:

ON CHANGES AND AMENDMENTS OF THE LAW ON THE PROTECTION OF INVENTIONS, TECHNICAL IMPROVEMENTS AND DISTINCTIVE SIGNS, APPLIED IN REPUBLIC OF CROATIA AS A CROATIAN LAW

“27b Article 1

The Industrial Property Office of the Republic undertakes expert and other work concerning: the protection of inventions, technical advancements, industrial marks and other signs distinguishing origin of goods, models and designs; collection and processing of patent documentation also related to protection and traffic of the foreign inventions; protection of industrial property deriving from the international treaties and specific regulations regarding the intellectual property; other duties that may be assigned under its competence.

The name of the Law on the Protection of Inventions, Technical Improvements and Distinctive Signs (“Sluibeni List SFRJ” No. 34/81, 3/90 and 20/90 and “Narodne Novine” No. 53/91; in the following text: the Law) is changed to: “Industrial Property Act”.

The Industrial Property Office of the Republic has the status of legal person.”

(. .)

Article 10

Following words in the text of the Law are changed: “Socialist Federative Republic of Yugoslavia” to “Republic of Croatia”, the word “Yugoslav” to “Croatian”. the words “the Federal Executive Council”, to “the Government of the Republic of Croatia”, the words “the federal organization competent for issues related to peoples’ defence” to “the Ministry of the Defence”, the words “the organization of associated labour or an enterprise” to “enterprises or other legal persons”, and the words “self-management agreement or other general acts” to “general acts”.

The Industrial Property Office of the Republic shall take over the workers which, on the day this Act comes into force, are situated in the Republic of Croatia on the duties taken over from the Federal Patent Office, (. .)

Article 2

In article 14, paragraph 1, of the Law the words “federal organization competent for issues related to patents and distinctive signs” are changed to: “The Industrial Property Office of the Republic”.

Appendix 2

Republic of Croatia

ACT ON CHANGES AND AMENDMENTS OF THE LAW ON THE PROTECTION OF INVENTIONS, TECHNICAL IMPROVEMENTS AND DISTINCTIVE SIGNS, APPLIED IN REPUBLIC OF CROATIA AS A CROATIAN LAW

rogefher wifh

DECREE PROMULGATING LAW ON THE PROTECTION OF INVENTIONS, TECHNICAL IMPROVEMENTS AND DISTINCTIVE SIGNS, APPLIED IN THE REPUBLIC OF CROATIA AS A CROATIAN LAW

Source: “Narodne Novine”, pp. 427428 No. 19, 2 April 1992

Entry in farce: 2 April 1992

Translation: unofficial, by M.V.

Text.

Based on Article 89 of the Constitution of the Republic of Croatia, and in connection with Articles 6 and 7 of the Constitutional Law for Enforcement of the Constitution of the Republic of Croatia, I am proclaiming

DECREE

PROMULGATING LAW ON THE PROTECTION OF INVENTIONS, TECHNICAL IMPROVEMENTS AND DIS- TINCTIVE SIGNS. APPLIED IN THE REPUBLIC OF CROATIA AS A CkOATIAN LAW

Article 3

Article IS, paragraph 2 of the Law is changed to:

“The existence of reciprocity shall be presumed unless proved to the contrary.”

Article 4

Article 19 of the Law is changed to:

“The Council of Experts shall bc formed at the Office a\ an advisory body.

Intellectual Property Rights in Croatia

The President and the Members of the Council shall be appointed by the Government of the Republic of Croatia after the proposal of its Minister of Sciences, Technology and Informatics.

The Council shall prescribe the Rules of Procedure for its work.

The Council gives its preliminary opinion on the program and the general acts proposed by the Director of the Office, and considers the reports on the implementation of the Act and functioning of the Office.

If the Director shall not agree with the opinion of the Council provided for in the preceding paragraph he shall be obliged to inform the Government of the Republic of Croatia which then shall make the decision.

The Council shall have especially emphasized role in the international cooperation in the field of industrial property of the Republic of Croatia and the Office.

The President of the Council and the Director of the Office shall represent the Republic of Croatia and the Office in international organizations and bodies in the field of industrial property rights.

Expert and technical assistance to the Council shall be performed by the Office.”

Article 5

In article 40 of the Law the words: “Upon securing the opinion of the competent republic or provincial chamber of the economy, the Yugoslav Chamber of the Economy” are changed to: “The Croatian Chamber of the Economy”.

Article 6

Articles 77a, 77b and article 93, paragraph 2 of the Law are replaced.

Article 7

Article 95, paragraph 1 of the Law is changed to:

“The applicant and any other person may request a complete examination of the conditions for the grant of a patent as from the date of the publication of the application.”

Article 8

Article 117 of the the Law is amended with the following paragraphs 4, 5 and 6:

“A person entitled to the patent protection for an invention related to the substances for the treatment of humans or animals, or for an invention related to application of substances for treatment of humans and animals as medicine, for which patent the application was submitted either on or before 31 December 1992, or for which application the priority right was requested on or before 31 December 1992, may in an infringement action claim only the compensation of damages for the period after 1 January 1993.

If claimed so, the court shall rule in favour of the successful plaintiff regarding the compensation for the future use of the invention referred to in paragraph 4 of this article. In deciding on the future compensation due by the unsuccessful defendant, the court is not bound by the claim in respect of the modes and terms of accounting and payment of the compensation.

The compensation set forth in paragraphs 4 and 5 of this article amounts to the average licence fee in this field of industry,”

Article 9

Article 172a, paragraphs 2 and 3 of the the Law are changed to:

“Following persons shall be eligible for registration in the register referred to in paragraph 1 of this article:

(1) attorneys, members of the Croatian Bar Association who have passed a special vocational exam at the Office;

(2) other natural persons, citizens of the Republic of Croatia, having completed their studies either ai a law faculty or at a facultv of science in the fields of natural science, technical siience or biotechnical science, and passed a special vocational exam at the Office;

(3) legal persons having their legal seat in the Republic of Croatia, employing at least one person referred to in subparagraph (2) of this paragraph.

The specific conditions on the special vocational exam for the registration at the register referred to in this article shall be prescribed by the Government of the Republic of Croatia.”

TRANSITIONAL AND FINAL PROVISIONS

Article 10

All intellectual property rights granted by the Federal Patent Office before 8 October 1991 shall continue to be in force on the territory of the Republic of Croatia until the date of expiration thereof.

Upon the request by the holders of the rights referred to in paragraph 1 of this article, the Industrial Property Office of the Republic shall register such right in the appropriate register.

Any right granted by the Federal Patent Office shall be considered as a right granted bv the Industrial Pronertv Office of the Republic upon yts registratidn at the register re’ferred to in paragraph 2 of this article.

The laws regulating industrial property of the Republic of Croatia shall be applicable in respect of the duration, content and scope of the rights referred to in paragraph 1 of this article and not registered at the appropriate register in the Republic of Croatia referred to in paragraph 2 of this article, if such laws are more favorable for the holder of the right.

Article 11

Contests of the validity of the industrial property rights granted by the Industrial Property Office of the Republic, or which are in force on the territory of the Reoublic of Croatia by virtue of this Act, are in exclusive jurisdiction of the courts of the Republic of Croatia.

Article 12

The rights arising from the international conventions and treaties in the field of industrial property ratified by SFR Yugoslavia before 8 October 1991 are guaranteed to foreign natural and legal persons on the territory of the Republic of Croatia.

Natural and legal persons resident or domiciled, or having legal seat on the territory of the Republic of Croatia, who submitted an application for patent, trademark or design right in a Member Country of the International Union for the Protection of Industrial Property after 8 October 1991 and before a decision by the Government of the Republic of Croatia referred to in article 13 of this Act, shall, upon their request have recognized the priority rights in the Republic of Croatia from the date of such application; with duration of the priority rights of 12 months for patent applications, and six months for trademark and design applications.

Patent, trademark and design applicants who submitted a first application to the Federal Patent Office before 8 October 1991, or who submitted an application to the Federal Patent Office . . invoking the priority right based on a first application in a Member Country of the International Union for the Protection of Industrial Property - and which application has neither been rejected nor was the right granted - may submit the same application within six months from the entry in force of this Act if such priority right expired before this Act entered in force.

M. Vukmir

Article 13

The provisions of article 14 of the Law shall not apply until further regulations of the Government of Croatia on their application take effect.

Article 14

A special vocational exam referred to in article 172a, paragraph 2, subparagraph (1) of the Law passed before 8 October 1991 at the Federal Patent Office shall be recognized as the exam passed at the Industrial Property Office of the Republic.

The persons enlisted in article 172a, paragraph 2, subparagraphs (1) and (2) who worked uninterruptedly in enterprises and other legal persons for at least four years before this Act entered in

force and which did not pass special vocational exam set forth in

paragraph 1 of this article may register at the register provided for in paragraph 1 of said article within the term of six months after entry in force of the regulations set forth in article 172a, paragraph 3 of the the Law, under the condition that they shall pass the special vocational exam thereafter. If said persons shall not pass special vocational exam within the term of two years from entry in force of the regulations referred to in article 172a, paragraph 3 of the the Law, their names shall be repealed from the register.

Article 15

This Act enters in force on the day of its publication in “Narodne Novine”.

No. 630-01/92-Ol/Ol Zagreb, 26 March 1992 Signatures (Omitted)