RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/262/Add.4
20 September  2001
(01-4473)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Croatia to the follow-up questions posed by the
European Communities and their member States and Switzerland
Addendum
By means of communications from the Permanent Delegation of Croatia dated 19 September
2001, the Secretariat has received the following responses to the follow-up questions posed by the
European Communities and their member States and Switzerland, as circulated in documents
IP/C/W/274/Add.1 and 263/Add.1, respectively
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EUROPEAN COMMUNITIES AND THEIR MEMBER STATES1
Follow-up to the response to question 18:
Please explain in which circumstances the type of protection awarded to a trademark in
the country of origin has a bearing on the priori ty of trademarks over geographical indications in
Croatia.  Please explain whether the characterisati on of a name as generic depends on elements to
be mustered in Croatia or in the country  of origin of the said indication.
According to the applicable la w "Law on the Protection of Geog raphical Indications of Products
and Services" (Article 27), a trademark shall not ha ve priority over a geographical indication in the
sense of preventing the grant of a geographical indicat ion and its entry into the register in the Republic
of Croatia, or declaring the decision on the grant and entry of a geographical indication into the register
null and void.
However, the validity of the protected trademar k which is identical with or similar to the
protected geographical indication shall be mainta ined and its use continued where the trademark
application was filed or a trademark was entered into the register in good faith, or where the right of use
was acquired by use in good faith before filing the application for the entry of geographical indication
into the register, and respectively before other form of protection was granted in its country of origin, or
before the expiration of one year from the date on which the WTO Agreement came into force in the
Republic of Croatia.
According to Article 6(1)3 of the same Law, a geographical indication shall not be granted
protection if the name of the place of  origin of a product or a service is not, or ceased to be, protected, or
has fallen into disuse in the country of origin, which includes the reasons for generic quality of the
name, as established in the country of origin.
                                                     
1 Croatia's responses to initial questions posed by  the European Communities and their member States
were circulated in document IP/C/W/262/Add.2.IP/C/W/262/Add.4
Page 2
Furthermore, according to the definition of generi c quality referred to in Article 7(1) of the Law,
it has been established that a geographical indication shall not be granted protection, if the name of the
place of origin of a product or a service, where it wa s originally produced or marketed, has become the
common name for a certain type of product or service,  defining therewith generic name criteria in the
Republic of Croatia.
Any interested person may file with the State Intellectual Property Office an opposition to the
application for the grant of a geographical i ndication, on the grounds of non-compliance of the
indication with the prescribed requirements, suppor ted by appropriate evidence and within a period of
three months from the date of publication of the applic ation in the Office official gazette (Article 17(1)).
The administrative decision on the protection of a geographical indication or the grant of the
right of use shall be declared null and void in the procedure before the Office, ex officio, or at the
request of a party, or a state attorney, if establishe d that the geographical indication has not satisfied the
prescribed requirements from the outset (Article 28(1)).
But the name of the place of origin protecte d by a geographical indication may not become
generic during the period of protection pr ovided by this Law (Article 7(2)).
Follow-up to the response to question 45:
Please explain whether Croatian law consid ers test data that, e.g. pharmaceutical
companies need to file for the authorisation of new compounds in Croatia as undisclosed
information.  Please explain whether such data is object of any type of protection.  Please clarify
whether such data shall be subject to the compul sory governmental disclosure and, if so, in which
circumstances.
The data referred to in the abovementioned question (the so-called "test data") are considered
to be business secrets, regulated by the Regulations on the Procedure and Method of Giving
Authorizations for Putting Medical Products into Circulation (Official Gazette of the Republic of
Croatia No. 92/99) based on the Law on Medical Products and Medicines (Official Gazette of the
Republic of Croatia No. 124/97).
The same applies to the data concerning new varieties of agricultural plants being under the
granting procedure, provided by the Law on Seeds, Planting Material and Granting of Agricultural
Plant Varieties (Official Gazette of the Republic of Croatia No. 124/97).
The definition of the business secret (as well as other kinds of secrets) is provided for by the
Law on the Protection of Data Secrecy (Official Gaze tte of the Republic of Croatia No. 108/96) while
the Penal Law (Official Gazette of the Republic of Croatia No. 110/97) provides for penal provisions
in the case of its disclosure.
There are no provisions in our legislation according to which such data shall be subject to the
compulsory governmental disclosure.IP/C/W/262/Add.4
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SWITZERLAND2
A. PATENTS
Follow-up to the response to question 2:
You mention that according to Article 4, paragraph 1 of the Patent Law (NN No. 78/99),
the patent protection shall exclude plant varietie s.  Please explain how your legislation provides
for protection of plant varieties.  Is it a protection by a sui generis  s y s t e m  a s  i n d i c a t e d  i n
Article 27.3 (b)  of the TRIPS Agreement?
As already said, plant varieties are excluded from patent protection, however, their protection
is provided by sui generis  provisions, in compliance with Article 27.3(b) of the TRIPS Agreement.
The sui generis  provisions are as follows:
- Law on the Protection of Agricultural Plant Varieties (Official Gazette of the
Republic of Croatia Nos. 131/97 and 62/2000);
- Law on Seeds, Planting Material and Granting of Agricultural Plant Varieties
(Official Gazette of the Republic of Croatia No. 131/97);
- Law on Granting New Authorization for Introducing into Production Foreign, and
Protection of Agricultural and Forest Plant Varieties (Official Gazette of the Republic
of Croatia Nos. 53/9 1, 26/93 and 29/94).
Follow-up to the response to question 3:
Please confirm whether your law, in acco rdance with Article 27.1 of the TRIPS
Agreement in combination with Article 31 of the TRIPS Agreement, considers importation as
"working/utilising“ a patent (and therefore precludes compulsory licensing, if a product is
imported).
According to the Croatian Law, importation shall be considered as "exploitation" of a patent,
and therefore precludes compulsory licensing for imported products.
Follow-up to the response to question 4:
A. Please explain whether your legislation provides for judicial review or other
independent review of the legal validity of any decision by administrative Authorities relating to
the authorisation of use as mentioned in Article 31 of the TRIPS Agreement.
The grant of a compulsory licence in the Republic of Croatia shall be the responsibility of
courts, and that of the Commercial Court in the firs t instance, and the High Commercial Court in the
second instance (Law on Courts, Official Gazette of the Republic of Croatia Nos. 3/94, 100/96,
131/97 and 129/2000).
B. Does your legislation provide for the granting of compulsory license to allow the
exploitation of a patent (“second patent”) which cannot be exploited without infringing another
patent ("the first patent") as mentioned in Article 31 (l) TRIPS Agreement?  If so, which
conditions shall apply for the granting of such licences in your legislation?
                                                     
2 Croatia's responses to initial questions posed by Switzerland were circulated in document
IP/C/W/262/Add.1.IP/C/W/262/Add.4
Page 4
Since not explicitly provided for, it may be understood that a request for granting a
compulsory licence may be filed in the case of exploitation of the so-called "second patent", which
may not be used without infringing the "first patent".  Its grant shall depend on the course of theprocedure, provided that the following requirements, referred to in Articles 57 – 59 of the Patent Law
are complied with:  the person filing a request shall prove that the patent owner does not exploit the
protected invention, or that he exploits it to the extent which is insufficient to satisfy the needs of the
Croatian market, or that he refuses to conclude a licence contract or sets forth non-market terms for
the conclusion of such a contract.
A compulsory licence shall be granted exclusively for the purposes of supplying the domestic
market, and in the case of its granting, the patent owner shall be entitled to remuneration,
corresponding to the economic value of the licence, to be determined by the court decision.
The patent owner may prove the existence of the legitimate reasons for justifying the non-
exploitation or insufficient exploitation of the protected invention.
B. P
ROTECTION OF UNDISCLOSED INFORMATION
Follow-up to the response to question 6:
Referring to the issue of unfair commercial use of data submitted by an applicant to the
responsible State Agency in the procedure for market authorisation of a pharmaceutical or of
an agricultural chemical product, please explain in  detail if your legislation explicitly prohibits a
second applicant from relying on, or from referring  to, the original data of the first applicant,
when applying subsequently for market authorisation for his own product.  Does the
responsible State Agency require the same amount of data from the second applicant as fromthe first applicant?  Does your legislation set a specific term of protection for undisclosed test or
other data of the first applicant?
The data referred to in the abovementioned question (the so-called "test data") are considered
to be business secrets, regulated by the Regulations on the Procedure and Method of Giving
Authorizations for Putting Medical Products into Circulation (Official Gazette of the Republic of
Croatia No. 92/99) based on the Law on Medical Products and Medicines (Official Gazette of theRepublic of Croatia No. 124/97).
The same applies to the data concerning new varieties of agricultural plants being under the
granting procedure, provided by the Law on Seeds, Planting Material and Granting of Agricultural
Plant Varieties (Official Gazette of the Republic of Croatia No. 124/97).
The definition of a business secret (as well as other kinds of secrets) is provided for by the
Law on the Protection of Data Secrecy (Official Gaze tte of the Republic of Croatia No. 108/96) while
the Penal Law (Official Gazette of the Republic of Croatia No. 110/97) provides for penal provisions
in the case of its disclosure.
There are no provisions in our legislation according to which such data shall be subject to
compulsory governmental disclosure.IP/C/W/262/Add.4
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C. ENFORCEMENT
Follow-up to the response to question 7:
Please explain how your legislation implements Article 50 of the TRIPS Agreement and
how the special requirements related to border measures of Articles 51 to 60 of the TRIPS
Agreement are implemented in your legislation.
In the case of industrial property rights, provisional measures comprise: desisting from
actions infringing protected rights, or actions which might infringe protected rights; the seizure or
exclusion from circulation respectively of the products resulting or acquired by the infringement of
protected rights and of the articles (implements and tools) predominantly used in the creation of theproducts infringing protected rights;  the preservation of evidence on the infringement of the protected
rights.  If there is a likelihood of irreparable damage to be done or likelihood that the later derivation
of evidence would be difficult or impossible, the court shall order a provisional measure, without
previously notifying the other party (Trademark Law, Article 53;  Law on the Protection of
Geographical Indications of Product and Services, Article 30(3);  Industrial Design Law, Article 52;Patent Law, Article 79;  Law on Protection of La yout-Designs of Integrated Circuits, Article 22;
Official Gazette of the Republic of Croatia No. 78/1999).  To the matters concerning the ordering of
provisional measures not regulated by these Laws, corresponding provisions of the Law on Execution,
Articles 292 – 307 (Official Gazette of the Republic of Croatia Nos. 57/1996 and 29/1999) and Civil
Procedure Law, Articles 272-276) shall apply.
In the case of copyright and related rights, provisional measures comprise:  seizure, exclusion
from circulation, and taking into custody of copies, means, equipment, and relevant documents;
interdiction of imminent infringements or of infringements already commenced;  other similar
measures (Copyright Law, Articles 97, 119(3) - Official Gazette of the Republic of Croatia
No. 9/1999).
In urgent cases, such as danger of irreparable damage, or for the purpose of preservation of
evidence, provisional measures are provided as well (Civil Procedure Law, Article 275(5); Patent
Law, Article 79(3)).
The procedures for provisional measures start on written application by the right owner (Civil
Procedure Law, Article 274;  Law on Execution, Article 293).
The court requires the applicant to show probable grounds for belief that his claim is existing
and that without the provisional measure the realis ation of his claim would be impossible or rather
difficult or that the measure is necessary to prevent the use of force or the event of irreparable harm(Law on Execution, Articles 293(2), 296 and 298).
In its decision, the court is free to define the duration of the provisional measure and, in cases
in which the measure was ordered before the making of a lawsuit or before the beginning of another
proceeding, the deadline for such a beginning (Law on Execution, Article 303).
The defendant has the right of appeal against the decision on provisional measures (Law on
Execution, Articles 46, 53).  The court may order the applicant to provide security for the defendant's
damages, which might occur due to the provisional measure (Law on Execution, Article 301).  The
defendant himself may provide security for the righ t owner's claims, in such case the provisional
measure is revoked (Law on Execution, Article 300(2) and (3)).  The defendant has the right to claim
damages, caused with the provisional measure, if the measure had no legal ground (Law on
Execution, Article 306).IP/C/W/262/Add.4
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The special requirements related to border measures of Articles 51 to 60 of the TRIPS
Agreement are implemented in Decree on Border Measures which the government of the Republic of
Croatia shall prescribe (Customs Law, Article 70(3) - Official Gazette of the Republic of Croatia
No. 78/1999). The text of abovementione d Decree has been drafted already.
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