The James Nurton Interview

Interview with Anamarija Stančić Petrović, Trademark and Patent Agent and PETOŠEVIĆ Croatia Director, published in Alicante News, February 2015

How did you become interested in the IP field?
This is a tricky question. I started in 1996 when I joined a small IP boutique law firm in Zagreb in a temporary job working in IP administration. That was before I had a law degree. I found it very interesting and decided to stay in the field: I completed a law degree and then a master’s degree in law specialising in IP from Queen Mary College of Law.

In 2004 I joined the PETOŠEVIĆ firm when it opened a representative office in Croatia, which then became fully incorporated with the firm in 2005 and I now head the team in Croatia. It will be our 10th anniversary in July this year. Altogether in the group we have about 120 people in 15 countries, with 12 people in Croatia. There are three lawyers, including me, and an attorney-at law as well as administrative staff and paralegals. We do all kinds of work from prosecution to enforcement. My specialty was patents but now I do more and more work in trade marks. Patent litigation in Croatia is very rare. I had previously studied musicology so I didn’t have a clue that I would end up in this particular field in my career!

What did you like about IP?
It was connected with my interests, particularly the copyright and trade mark aspects. I found IP really interesting but I wasn’t particularly interested in other areas of the law, such as criminal law.

How has IP changed in Croatia in the past decade?
We have reformed and harmonised the law and we became a full member of the EU in July last year. There have ben a lot of amendments to the law and practice in the country.

We have found the Community systems efficient and cost-effective for securing trade mark protection compared to the cost of applying for national marks. The trend is changing and that’s good. Before we joined the EU, only about 10% of Croatian corporations managed to protect their IP and very few small businesses did so. Now we see an increase in filing and use of the CTM system.

The Community system works well and enables local companies to protect and enforce their rights in Croatia and abroad. We also find the case law databases are very helpful in our daily work today.

Drawbacks include that a right in one country can block a CTM application. Another issue we see is the costs of filing Community trade marks – having lower fees for one-class filing would make the
system more accessible to small businesses.

One trend we see is that the economic crisis in Croatia has caused a growth in the grey market and a lot of circulation of counterfeits particularly in the past year. Customs forces are doing their job quite well and stop most goods at the border but we also see local companies abuse the system and we have a lot of bad-faith filings of national trade marks. CTM owners have to fight for their rights by filing cancellation actions or court actions.

What can people do about these bad faith filings?
It is an obstacle. All the CTMs were extended to Croatia as of July 1 last year. Companies monitor rights in all these countries and they suddenly discover that local trade mark rights for identical or
similar marks are on the market. We cannot claim bad faith in the opposition procedure, but we can try to cancel the mark after registration or initiate a court action. Those who acquired bad-faith marks used to file lots of Customs applications, so genuine goods were being stopped due to local trade mark rights. It is really a big problem.

We are trying to oppose when we can but in most cases we have to pursue a cancellation action. In our trade mark law the holder of the national right can block the trade mark registration, so this is quite a big issue that we are dealing with.

How well do the court proceedings work in Croatia?
The courts lack structure and expertise. The Commercial Court has six judges specialising in the field but they still have to be trained and everything takes far longer than it should. Most trade mark cases are connected with Customs enforcement. In infringement cases, we can settle almost all disputes we see but when it comes to Customs most of the cases end up at the courts and the litigation can last two years or more. There are also problems with the storage and destruction of goods.

What’s been the most unusual case you have worked on?
A few years ago we managed to close the fake Hard Rock Café in Zagreb, which was opened in the early 1990s during the war. No one knew it was not the original Hard Rock Café and it was very popular; lots of TV shows were broadcast from there. Many people thought it was the original.

Our client had registered Hard Rock Café but had not used the mark in Croatia, so that presented a problem when we filed an infringement case. The other party filed for non-use. So we claimed the copyright on the Hard Rock logo, we won the case on that basis and the client was very happy, so I am proud of that case.

We don’t yet have the original Hard Rock Café in Zagreb but there are rumours that one will open soon.

What other issues do you see becoming more important?
Cases arising from infringement on the internet and social media are increasing. In general, issues arising from new technology are becoming more common. Also the Unitary Patent system is looming, and we have an amended Copyright Law coming. I read some articles recently about the law needing to move on from the Paris and Berne Convention to adapt to modern technologies and businesses. I think that is interesting; it is hard for the law to keep up with technology.

In Croatia we also have to adapt to the European systems. And we are considering the UPLA Convention on plant varieties, and how to improve the regulation of Customs. There will be a lot of changes still to come in IP law and practice. We are adjusting to the European system and struggling with that and the continuing economic crisis, which is a major problem.

Is it a good time to be working in IP?
Yes – it is very challenging as the practice is constantly evolving.