4th LIAISON MEETING ON TRADEMARKS BETWEEN OHIM AND EXPERTS FROM THE NATIONAL OFFICES ( Alicante, June 2009) REPRESENTATION OF SOUND MARKS Presented by: EMIR TETARIC Head of Substantive Trademark Examination Section

LEGAL FRAMEWORK Trademark Act ( Official Gazette of the Republic of Croatia: 173/03, 76/07 and 30/09 ) SIGNS WHICH CAN BE PROTECTED AS TRADEMARKS Article 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 another undertaking.

INTERNATIONAL REGISTRATION Chronology- sound marks Before 2007 No registered sound marks in Croatia No possibility of protection under Croatian practice and Law. Graphical representation of the sound mark in musical notation - not accepted All sound marks applied through the Madrid system in musical notation – refused (not considered as sufficient graphical representation under Article 2 of the Trademark Act) DECIDED CASE: REFUSED Classes. 29,30,35,39 IR

INTERNATIONAL REGISTRATION Chronology- sound marks After 2007 Change of practice Graphical representation of sound mark in musical notation- accepted under Article 2 of the Trademark Act Only traditional musical notation on a stave - accepted Frequency oscilograms and sonograms - would not be accepted DECIDED CASE: IR ACCEPTED Class: 36

NATIONAL REGISTRATION 2007 Possibility of national registration of sound marks under Article 7 of the Trademark Regulations Graphical representation of non-conventional trademarks Sieckmann case (C-273/00) No sound mark applications (1) If the application requests the registration of another type of a sign, the application shall state the type of the sign. (2) Depending on the type of the sign for which the registration is requested by the application, the application shall be accompanied by a graphical representation of a sign, which is clear, precise, self-contained, easily available, durable and objective. (Article 7, Trademark Regulations Official Gazette, No: 117/07 of 14 November 2007) Other types of signs

TRADEMARK APPLICATION FORM - National registration

PRIORITY DOCUMENTS (sound marks) NATIONAL REGISTRATION No similar cases in Croatia No possibility of electronic filling Priority documents accepted (in Croatia priority must refer to the same mark) Conditions prescribed by the Trademark Act within the meaning of the Article 4 of the Paris Convention, regardless of the type of the mark EXAMPLE : If priority of a sound mark is claimed in the form of sonogram priority documents would be accepted A sound mark in the form of sonogram would be refused (such representation doesnt fulfill the criteria of graphical representation under Article 2 of the Trademark Act)

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