4th LIAISON MEETING ON TRADEMARKS BETWEEN OHIM AND EXPERTS FROM THE NATIONAL OFFICES (Alicante, 11-12 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 REGISTRATIONChronology- 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 753 244

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 881 231

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 doesn’t fulfill the criteria of graphical representation under Article 2 of the Trademark Act)

Thank you for your attention!