NN 173/2003, in force from January 1, 2004
*NN 76/2007, in force July 31, 2007
**NN 30/2009, in force March 17, 2009
Zagreb December, 2009
Industrial
Design Act
And
THE ACT ON AMENDENTS
TO THE INDUSTRIAL DESIGN ACT*/**
I. GENERAL PROVISIONS
SUBJECT MATTER OF THE ACT
Article 1
This Act provides the requirements for the protection of a design, regulates the right to protection, the acquisition of the industrial design, the scope and term of industrial design protection, exclusive rights conferred by the industrial design, the industrial design registration procedure, the changes relating to industrial designs, the termination and invalidation of industrial designs, international deposit of industrial designs, civil protection and misdemeanour provisions.
DEFINITIONS
Article 2
For the purposes of this Act: - 1. “Design” means the appearance of the whole or a part of a product resulting from its features, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation,
“Product” means any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product, packaging, get-up of books, graphic symbols and typographic typefaces, but excluding computer programs,
“Complex product” means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.
II. PROTECTION REQUIREMENTS
REQUIREMENTS FOR PROTECTION
Article 3 - (1) A design shall be protected by an industrial design to the extent that it is new and has individual character.
- (2) A design applied to or incorporated in a product which constitutes a component part of a complex product shall only be considered to be new and to have individual character:
- 1. If the component part, once it has been incorporated into the complex product, remains visible during normal use of the latter,
- 2. To the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.
- (3) “Normal use” within the meaning of paragraph (2) item 1 of this Article shall mean use by the end user, excluding maintenance, servicing or repair work.
NOVELTY OF DESIGN
Article 4 - (1) A design shall be considered to be new if no identical design has been made available to the public prior to the date of filing of the application for registration of the industrial design (hereinafter referred to as: industrial design application) or, if a priority is claimed, the date of granted priority.
- (2) Designs shall be deemed to be identical if their features differ only in immaterial details.
INDIVIDUAL CHARACTER OF DESIGN
Article 5 - (1) A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public prior to the date of filing the industrial design application or, if priority is claimed, the date of granted priority.
- (2) In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
DISCLOSURE OF DESIGN
Article 6 - (1) A design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited or used in trade or otherwise disclosed, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Republic of Croatia, prior to the date of filing of the industrial design application or, if priority is claimed, prior to the date of granted priority. The design shall not be deemed to have been made available to the public for the sole reason that it has been disclosed to a third person under explicit or implicit conditions of confidentiality.
- (2) A disclosure shall not be taken into consideration if a design for which protection is claimed has been made available to the public:
- 1. By the designer, his successor in title, or a third person as a result of information provided or action taken by the designer or his successor in title,
- 2. During the 12-month period preceding the date of filing of the industrial design application or, if priority is claimed, the date of granted priority.
- (3) The provision referred to in paragraph (2) of this Article shall also apply if the design has been made available to the public as a consequence of an abuse in relation to the designer or his successor in title.
DESIGNS DICTATED BY THEIR TECHNICAL FUNCTION AND DESIGNS OF INTERCONNECTIONS
Article 7 - (1) An industrial design shall not subsist in features of appearance of a product:
- 1. Which are solely dictated by its technical function; or
- 2. Which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated, or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.
- (2) Notwithstanding the provision referred to in paragraph (1) item 2 of this Article, an industrial design shall, under the conditions set out in Articles 4 and 5 of this Act, subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.
DESIGNS CONTRARY TO PUBLIC INTERESTS
OR ACCEPTED PRINCIPLES OF MORALITY
Article 8
An industrial design shall not subsist in a design that is contrary to public interests or accepted principles of morality.
GROUNDS FOR REFUSAL OF PROTECTION
OR FOR INVALIDITY
Article 9
An application for registration of a design shall be refused, i.e. a registered industrial design shall be invalid if: - 1. The design is not a design within the meaning of Article 2 item 1 of this Act,
- 2. The design does not fulfil the requirements of Articles 3 to 8 of this Act,
- 3. The applicant for or the holder of the industrial design is not entitled to the acquisition of the industrial design under this Act,
- 4. The design is in conflict with an earlier design which has been made available to the public after the date of filing of the industrial design application or, if priority is claimed, after the date of granted priority, and which is protected from a date which is earlier than the said date by an industrial design registered in the Republic of Croatia or an application for such a design,
- 5. A distinctive sign is used in the creation of a design, and the holder of the earlier right had the right to prohibit such use,
- 6. The design constitutes an unauthorised use of a work protected under the provisions of the act regulating copyright and related rights,
- 7. The design constitutes an improper use of any of the items listed in Article 6ter of the Paris Convention for the Protection of Industrial Property (hereinafter referred to as: the Paris Convention), or of badges, emblems and escutcheons other than those covered by the said Article of the Paris Convention, which are of particular interest to the Republic of Croatia.
III: RIGHT TO PROTECTION
DESIGNER
Article 10 - (1) A designer is a natural person who created a design.
- (2) A person who has only provided technical assistance in the creation of an industrial design shall not be deemed a designer.
MORAL RIGHT OF THE DESIGNER
Article 11 - (1) Notwithstanding whether he is the applicant or the right holder, the designer shall have the right to be cited as the designer in all documents and during public exhibitions of his design.
- (2) The moral right of the designer cannot be transferred.
- (3) If several designers participated in the creation of the design jointly, all designers shall be entitled to the right referred to in paragraph (1) of this Article, notwithstanding their contribution in the creation of the design.
PERSONS ENTITLED TO THE ACQUISITION
OF INDUSTRIAL DESIGNS
Article 12 - (1) The designer or his successor in title is entitled to initiate the procedure and to acquire industrial design rights in accordance with this Act.
- (2) If the designer is not the industrial design applicant, the applicant shall be deemed the person entitled pursuant to paragraph (1) of this Article, until proven to the contrary.
- (3) If the design was created on the basis of a commission contract, the right to initiate the procedure and to acquire industrial design rights shall vest in the commissioner of the design, unless otherwise specified by contract.
- (4) If the design was created by an employee in the execution of his duties or following the instructions given by his employer, the right to initiate the procedure and to acquire industrial design rights shall vest in the employer, unless otherwise specified by contract.
- (5) If the design was created by the joint efforts of several designers, the right to that design shall vest in them, i.e. their successors in title, jointly, and they shall all be deemed entitled persons pursuant to paragraph (1) of this Article.
- (6) The share of the designer in a jointly created design shall be determined in proportion to each of the designers' actual contribution in creating the design, unless otherwise specified by contract.
- (7) If the shares of the designers are not specified or cannot be determined pursuant to paragraph (6) of this Article, they shall be deemed equal.
EQUAL STATUS OF PERSONS ENTITLED TO HOLD INDUSTRIAL DESIGNS
Article 13
Foreign legal and natural persons not having a principle place of business, i.e. a domicile or a habitual residence on the territory of the Republic of Croatia shall enjoy protection provided for by this Act, if it results from international treaties binding the Republic of Croatia or from the application of the principle of reciprocity.
IV. ACQUISITION, SCOPE AND TERM OF INDUSTRIAL DESIGN PROTECTION
ACQUISITION OF INDUSTRIAL DESIGN
Article 14 - (1) An industrial design shall be acquired by the decision on registration of an industrial design and by its entry in the register.
- (2) The date of entry in the register shall be the same as the date of the decision on granting the registration of an industrial design.
SCOPE OF PROTECTION
Article 15 - (1) The scope of the protection conferred by an industrial design shall include any design that does not produce a different overall impression on the informed user.
- (2) In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.
TERM OF PROTECTION
Article 16 - (1) Industrial design protection shall last for a period of 5 years as from the date of filing of the industrial design application.
- (2) Industrial design protection may be renewed for periods of 5 years each, up to a total term of 25 years from the date of filing of the application.
- (3) The industrial design holder seeking renewal of protection shall submit to the Office a request for renewal of industrial design protection and shall pay the appropriate fee and procedural charges for the maintenance, and shall do so during the final year of the term of protection or not later than 6 months after the expiry of the said term.
- (4) The new protection term shall begin on the day of expiry of the previous protection term.
- (5) The entry of the renewal of industrial design protection shall be published in the official gazette of the Office.
- (6) The information contained in the request for renewal of industrial design protection shall be provided for in the Regulations for the implementation of this Act (hereinafter referred to as: the Regulations).
V. EXCLUSIVE RIGHTS
CONFERRED BY THE
INDUSTRIAL DESIGN
EXCLUSIVE RIGHTS
Article 17 - (1) The industrial design holder shall have the exclusive right to use the registered design and to prevent any third party not having his authorization from using it.
- (2) Use, within the meaning of paragraph (1) of this Article, shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for the above purposes.
- (3) If the publication of a registered industrial design is deferred within the meaning of Article 36 of this Act, for the duration of the deferment, the holder shall have the right to prevent third parties from taking the actions referred to in paragraph (2) of this Article only if such use results from copying of the registered design.
LIMITATION OF EXCLUSIVE RIGHTS
conferred by an industrial design
Article 18 - (1) The exclusive rights referred to in Article 17 of this Act shall not be exercised in respect of:
- 1. Acts done for private and non-commercial purposes,
- 2. Acts done for experimental purposes or
- 3. Acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal use of the design, and that mention is made of the source.
- (2) In addition to the acts set out in paragraph (1) of this Article, the exclusive rights conferred by an industrial design following its registration shall not be exercised in respect of:
- 1. The equipment on ships and aircrafts registered in a third country when these temporarily enter the territory (maritime zone) of the Republic of Croatia,
- 2. The import of spare parts and accessories into the Republic of Croatia for the purpose of repairing such ships and aircrafts,
- 3. The execution of repairs on such ships and aircrafts.
PRIOR USE
Article 19 - (1) A right of prior use shall exist for any third person who can prove that, before the date of filing of the industrial design application, or, if a priority is claimed, before the date of granted priority, he has in good faith commenced use of a design included within the scope of protection of a registered design in the territory of the Republic of Croatia, or has made serious and effective preparations to that end, as well as if the said design has not been created by copying of the protected design.
- (2) The right of prior use shall entitle the third person to exploit the design for the purposes for which its use had been effected, or for which serious and effective preparations had been made, before the filing date of an industrial design application or before the date of granted priority, if priority is claimed.
- (3) The right of prior use shall not extend to granting a license to another person to exploit the design.
- (4) The right of prior use cannot be transferred except, where the third person is an entrepreneur, along with that part of the undertaking in the course of which the act was done or the preparations were made, within the meaning of paragraph (1) of this Article.
EXHAUSTION OF RIGHTS
Article 20 - (1) The exhaustion of the right to prohibit the use of a product in which a design is incorporated shall occur when the product is put on the market in the Republic of Croatia by the holder of the industrial design or with his consent.
- (2) The exhaustion of the rights referred to in paragraph (1) of this Article may also be extended to the territory outside of the Republic of Croatia, if so stipulated in International treaties binding the Republic of Croatia.
VI. RELATIONSHIP TO OTHER
FORMS OF PROTECTION
APPLICATION OF OTHER REGULATIONS
Article 21
The provisions of this Act shall be without prejudice to any other regulations relating to trade marks or other distinctive signs, patents and regulations governing civil liability and unfair competition.
RELATIONSHIP TO COPYRIGHT
Article 22
A design protected by an industrial design shall also be eligible for copyright protection from the date on which the design was created or fixed in any form, if it meets the requirements stipulated by the law regulating copyright and related rights.
VII. INDUSTRIAL DESIGN REGISTRATION PROCEDURE
THE OFFICE AUTHORITY
Article 23 - (1) Administrative tasks related to the registration of an industrial design shall be carried out by the State Intellectual Property Office (hereinafter referred to as: the Office)
- (2) An appeal cannot be launched against administrative decisions adopted by the Office, but an administrative dispute may be initiated.
INITIATION OF THE INDUSTRIAL DESIGN REGISTRATION PROCEDURE
Article 24
The procedure for the registration of an industrial design shall be initiated by filing an industrial design application to the Office.
CONTENTS OF AN INDUSTRIAL
DESIGN APPLICATION
Article 25 - (1) An industrial design application shall contain:
- 1. A request for industrial design registration,
- 2. Information identifying the applicant,
- 3. A representation of the design suitable for reproduction. If the object of the application is a two-dimensional design and the application contains a request for deferment of publication within the meaning of Article 36 of this Act, the representation of the design may be replaced by a specimen.
- (2) The industrial design application shall further contain:
- 1. An indication of the product in which the design is intended to be incorporated or to which it is intended to be applied,
- 2. Information identifying the duly authorised representative with power of attorney if the applicant has appointed one,
- 3. Information identifying the common representative, if a joint application has been filed,
- (3) The industrial design application may contain:
- 1. A description explaining in more detail the representation or the specimen,
- 2. A request for deferment of publication of the registered industrial design within the meaning of Article 36 of this Act,
- 3. The classification of the product (indication of the class) in which the design is intended to be incorporated or to which it is intended to be applied, in accordance with the Locarno Agreement Establishing an International Classification for Industrial Designs (hereinafter referred to as: the International Classification)
- 4. Information identifying the designer or designers or a statement that the designer or designers do not want to be cited,
- 5. Information and evidence of the priority referred to in Article 29 or Article 30 of this Act.
- (4) The elements that an industrial design application should, i.e. may contain are regulated in more detail by the Regulations.
- (5) The information contained in the elements referred to in paragraph (2) item 1 and in paragraph (3) items 1 and 3 of this Article shall not affect the scope of protection of the design as such.
MULTIPLE INDUSTRIAL DESIGN APPLICATION
Article 26 - (1) If the industrial design application contains a request for the registration of several designs (hereinafter referred to as: multiple application), all the products in which the design is intended to be incorporated or to which it is intended to be applied must belong to the same class of the International Classification for Industrial Designs.
- (2) The total number of designs for which protection is sought shall be indicated in the multiple application.
- (3) Each of the designs contained in a multiple application, as well as after their registration, may be dealt with separately from the others for the purpose of applying the provisions of this Act. A design may in particular, separately from the others, be enforced, licensed, be the subject of a right in rem, levy of execution or bankruptcy proceedings, be surrendered, renewed or transferred, be the subject of deferred publication or be declared invalid.
DIVISION OF A MULTIPLE APPLICATION
Article 27 - (1) The applicant may divide a multiple application into two or more applications in such a manner that each refers to one or more product designs.
- (2) An application separated from a multiple application shall retain the priority right of the latter application.
- (3) Further requirements for the dividing of a multiple application shall be regulated by the Regulations.
PRIORITY
Article 28
The applicant whose industrial design application has the earlier filing date has the right of priority over any other applicant filing later an industrial design application for the identical design.
UNION PRIORITY RIGHT
Article 29 - (1) If the applicant has filed an industrial design application for the first time in any of the Member States of the International Union established by the Paris Convention for the Protection of Industrial Property (hereinafter referred to as: the Paris Union), or the World Trade Organisation, he may invoke, when filing the application for the same industrial design in the Republic of Croatia, the date of the first filing, on condition that the application in the Republic of Croatia be filed within 6 months from that date.
- (2) In the application he is filing to the Office, the applicant invoking the union right of priority shall indicate relevant information pertaining to the application invoked (state, application date and number) and not later than within 3 months from the date of filing the application to the Office, shall submit a true copy of the first application certified by the competent body of a Member State of the Paris Union or the World Trade Organisation and a translation of the true copy in the Croatian language.
- (3) If the applicant does not meet the requirements set out in paragraph (2) of this Article, priority shall be deemed not to have been claimed.
EXHIBITION PRIORITY RIGHT
Article 30 - (1) If an applicant has displayed products in which the design is incorporated, or to which the design is applied, at an official or officially recognised international exhibition in the Republic of Croatia or in some other Member State of the Paris Union or the World Trade Organisation, he may request that the date of the first day of the exhibition of such products be accorded as the date of the first application, if he files the application in the Republic of Croatia within a period of 6 months from such date.
- (2) An applicant invoking the exhibition priority right, shall, alongside the application filed to the Office, file a certificate issued by the competent authority of the Member State of the Paris Union or the World Trade Organisation, containing information concerning the type of the exhibition, venue, dates of opening and closing of the exhibition and the first day of exhibiting the products cited in the application, and evidence that the product design which was exhibited is identical to the one cited in the application.
- (3) If the applicant does not meet the requirements set out in paragraph (2) of this Article, priority shall be deemed not to have been claimed.
ACCORDANCE OF THE FILING DATE OF AN INDUSTRIAL DESIGN APPLICATION
Article 31 -