The amendments affect Croatia’s Patent Law, Trademark Law, Law on Industrial Designs, Law on Geographical Indications and Appellation of Origin, Law on Protection of Topographies and Semiconductors and Law on Copyright and Related Rights . The above amendments are now completely harmonized with E.U. laws in the field of intellectual property rights.

The most important change is the introduction of the appeal proceeding before the Croatian State IP Office against decisions rendered in the first-instance administrative procedure. The Appeal Board will be appointed by the Government of the Republic of Croatia and will work independently. The provisions related to the appeal proceedings are expected to come into force on June 1, 2008 . The amendments will provide more transparency in the decision rendering process in the first instance.

The above amendments also correct certain errors and further clarify existing provisions of the above-mentioned laws. The laws were published in the Official Gazette No. 76/2007 on July 23, 2007, and the Official Gazette No. 79/2007 on July 30, 2007.

Background

Yugoslavia established its connection with the global internet in 1989 when Belgrade University joined the European Academic Research Network (EARN). Three years later, in 1992, Yugoslavia disintegrated and the Union of Serbia and Montenegro became the legal successor. When the United Nations introduced sanctions against the country, the Union of Serbia and Montenegro was formally excluded from the interconnection of academic computer centers provided through EARN and thus from the global internet.

Between 1992 and 1994 certain individuals from the academic community in Serbia began to take steps to reestablish communication with the global internet, and to establish a registry of national internet domain names for the .yu ccTLD. After numerous appeals for help to the relevant international and European organizations existing at the time, the management of the .yu ccTLD was finally assigned to a group of enthusiasts from the University of Belgrade. The Registry called itself YU NIC (the Yugoslav Network Information Center) and began registering domain names in 1995.

Since there was virtually no support from government institutions, which paid little attention to issues related to the internet in the 1990s, the newly established YU NIC was limited in what it could accomplish. As a consequence, the conditions for registration of .yu domain names were restrictive. These restrictions included the following:

• Only legal entities (companies and organizations) located in Serbia were permitted to register domain names (individuals were not eligible to obtain a domain name).

• Foreign companies and organizations without local representative offices were not eligible to apply for domain names.

• Each registrant was permitted only one domain name.

• Once registered, a domain name could not be transferred to a third party.

• The .yu ccTLDs was divided into four domains:

1) .ac.yu -intended for academic institutions (universities);

2) .co.yu – intended for domestic legal entities and for foreign legal entities having a representative office established in Serbia;

3) .org.yu – for domestic NGOs;

4) .edu.yu – for educational institutions and organizations in Serbia (other than universities). Despite the restrictive criteria for registration, YU NIC receives more than 100 new applications or modification requests per day, and the ccTLD management is simply unable to cope with the significant interest in domain name registrations in Serbia.

Reform initiatives

Although the new country codes were issued and announced in September 2006, the new .rs ccTLD is still not in use on the internet. The .yu ccTLD continues to operate and be managed by YU NIC. However, in preparation for the introduction of the new ccTLD, a new registry of national internet domains was founded in July 2006. The new organization, Serbian Registry of Internet Domains (RNIDS), is an expert, non-political, non-profit organization that is set to become the ccTLD manager for Serbia. The founders of RNIDS include 34 organizations related to the local internet community (major ISPs, telecom operators, academic institutions, NGOs and state institutions) and it is supported by the Serbian Ministry of Science and Environment. The main purpose of RNIDS will be to manage the ccTLD in Serbia and to oversee the transition from .yu to .rs ccTLDs. The organization will fund itself through the registration fees for domain names on a cost recovery basis only.

According to the information, received from a member of the Management Board of the new registry, RNIDS will probably formalize its relationship with ICANN shortly and begin operating in February 2007. Until that time, YU NIC will continue to operate. Even when RNIDS is formalized as the ccTLD manager for Serbia, it is likely that .yu domain names will remain in use (perhaps for as much as five more years) but that new registrations will have the new .rs extension.

New system

According to information received from another member of the RNIDS Management Board and also an ICANN ccNSO council member, the new Registry plans to establish new regulations to govern the registration of ccTLD names in Serbia. These new regulations will include an easing of the strict criteria for registrants and also the establishment of a dispute resolution policy. Markovic noted that, in the course of public discussions, the following preliminary conclusions were reached regarding the contents of these regulations for the new registration system.

Second-level domains in the new .rs ccTLD

The .rs ccTLD will be divided into the following second-level domains:

• .rs – intended for all interested parties;

• .co.rs – intended only for legal persons;

• .org.rs – for NGOs;

• .ac.rs – for academic institutions (universities);

• .edu.rs – for educational institutions and organizations;

• .gov.rs – only for government institutions;

• .in.rs – only for natural persons (individuals).

Transition period

The transition from .yu domains to .rs domains will be phased in gradually. When the registration of .rs domains begins, applications for the registration of .yu domains will no longer be accepted. At the same time, registrants of .yu domain names can file a request that they be either deleted or transferred into the .rs domain.

Eligible registrants

The proposed regulations would simplify conditions for registration of domain names not only for domestic entities, but also for foreign companies/organizations and individuals. However, it was decided that foreign entities (both legal and natural persons) not domiciled in Serbia should still have to register a domain name through a Serbian natural or legal person (for example, a local attorney, or a local ISP or a local distributor). This stipulation has been included to try to ensure that Serbian courts have jurisdiction over any disputes between a particular registrant and RNIDS. On this basis, the proposed eligible registrants under the new system are:

1) natural persons (individuals), with Serbian citizenship;

2) foreign individuals, with a permanent residence permit;

3) natural persons, with Serbian citizenship, who are not domiciled in Serbia (but only if acting through a representative who has Serbian citizenship and is domiciled in Serbia or has his principal seat in Serbia);

4) legal persons, with their principal seat in Serbia;

5) foreign legal persons, with no principal seat in Serbia (if acting through a local representative who has Serbian citizenship and is domiciled in Serbia or has his principal seat in Serbia).

Unlimited domains

The proposed regulations would allow an unlimited number of domain names per single registrant.

Whois database

The proposed regulations provide that RNIDS will have its own Whois database. It will act as a public source of information about domain name registrants registered in the .rs ccTLD Registry.

A domain name will be considered registered once it has been recorded in the RNIDS Registry and is accessible through the Whois database.

Cost and timeframe

Under the proposed regulations, it would be possible to register a domain name on a yearly basis, for a maximum of five years, after which a renewal will be required. The registration can then be renewed for an indefinite number of five- year periods, provided fees are paid promptly.

Domain name transfer

According to the proposed regulations, once registered, domain names will be permitted to be sold or otherwise transferred to another party. The assignee need only file a request for registration with a written statement, signed by the assignor of the particular domain name, within which the assignor gives his or her authorization for the assignment of the domain name. The assignor’s domain name registration will then be deleted and the new registration will be recorded into the RNIDS register and the Whois database in the name of the assignee.

New dispute settlement policy

The proposed regulations envision the adoption of a Dispute Resolution Policy. The new RNIDS Dispute Resolution Policy will be based on provisions of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), in particular, the mandatory administrative proceedings (paragraph 4 of the ICANN Policy). However, RNIDS itself would not be competent to settle any dispute in connection with registered domain names. It will be recommended that parties address disputes regarding .rs ccTLDs to the Center for Arbitration, which is a department within the Serbian Chamber of Commerce (in accordance with the Law on Chambers of Commerce Official Gazette RS, 65/01), or before the Center for Mediation in Serbia (in accordance with the Law on Mediation, Official Gazette RS 18/2005).

In line with international standards

A new governing body, RNIDS, is expected to be operational soon and new regulations governing the registration of domain names are likely to come into force early in 2007. It is hoped that these changes, based on the best practices of surrounding countries and the EU, will bring Serbia into line with modern international standards in the internet area. This is another essential step towards making Serbia a competitive and attractive market for investment.

The authors, Vesna Gakovic, an associate and Kathryn Szymczyk, a director of legal strategies and client services, are based at SD PETOSEVIC Balkan Regional Office in Belgrade, Serbia.

The biggest and most disturbing obstacle is the monopoly of the state company Telekom Srbija on fixed-line telephony, provided by its contract with Greek and Italian companies until 2005 and confirmed by the Telecommunication Law. Telekom Srbija was present long before the contracts with its partners were signed in 1997. Although the monopoly of the Serbian Post Company PTT, foreseen by a previous 1991 law was abolished, Art. 109 of the law confirmed the monopoly of Telekom Srbija agreed in the contracts with the Italian and Greek partners. The government explained that this “contract monopoly” could not be easily abolished, for there was no legal basis for unilateral abolishment and thus abolishment could result in a financial penalty for Serbia. Moreover, the government argued that there have been countries in a similar situation that have had a transition period (e.g., in Greece it was five years ago) to adapt their markets to liberalization and free competition.

Telekom Srbija often abused its dominant position in the past, especially in relation to Internet providers. The monopolistic behavior of Telekom Srbija caused considerable damage to ISPs, which were accused of violating the contract signed in 1997 by using VoIP and as a consequence their use of fixed lines was limited or forbidden. Even though court judgments were brought in favor of ISPs, Telekom Srbija long refused to comply.

While the government finds these protective measures indispensable, the EU and WTO experts are not satisfied, nor are Serbian public opinion or the professional community. The basis of free competition has not been established, and Serbia risks having difficulties in acceding to both EU and WTO. Moreover, various problems related to the ownership of Telekom Srbija persist.

In February 2004, structural government reforms were instituted. A new Ministry for Capital Investments was created to replace Ministry of Telecommunications and Transport. The new Ministry seems determined to solve problems that the Telecommunication Law could not, as well as to achieve goals foreseen by the law but not accomplished to date, such as creation of an executive body, the agency for Telecommunication. Will the new government fulfill its promises and liberalize the market that has been monopolized on a legal basis? Or will Serbia be late, once again?

The Vienna Agreement is what is known as a Special Union between the contracting states. It establishes a common classification for marks that contain or consist of figurative elements. The agreement has the same duration as the Paris Convention for the Protection of Industrial Property.

Contributor: Anamarija Stančić Petrovic, SD PETOSEVIC, Zagreb, Croatia; Verifier: Vanessa Bouchara, Bouchara & Associes, Paris

Croatian IP laws, as well as the Law on Customs, are now fully harmonized with EU legislation. Therefore, the Croatian State, through regulations and various bodies of executive power (inspectorate, customs, police), is trying to bring counterfeiting to a minimum and sanction the infringer’s in an appropriate manner.

Inspections of goods are continuously carried out on the Croatian market in order to protect consumers and trademark owners from counterfeit products. The State Inspectorate instigates the inspection of goods, while the suppression of selling counterfeits is in the competence of Croatian Customs and the Ministry of Internal Affairs.

Trade mark

Control over trademark infringement is regulated by the Trademark Law (Official Gazette No. 173/03). The Law is applied to individual, collective, and certification marks that are pending and/or registered at the Croatian State Intellectual Property Office as well as to International Trademark Registrations that are valid in Croatia, according to the Madrid Agreement and Protocol. In the case of an infringement, in accordance with the pro-visions of the Trademark Law, infringer’s are subject to a fine, while counterfeit goods can be seized and destroyed.

The most frequent form of trademark infringement is the circulation of garments, footwear, and leather goods, which are imported or locally made counterfeit products (fakes). Almost all known brands are counterfeited: ADIDAS, BIG STAR, CALVIN KLEIN, DIESEL, FENDI, FILA, FISHBONE, GAS, GUCCI, HUGO BOSS, LEVI STRAUSS, LEVI’S, LOTTO, LOUIS VUITTON, NAUTICA, NAVIGARE, NIKE, PUMA, PAUL & SHARK, SPEEDO, SERGO TACHINI, TOMMY HILFIGER, and UNGARO. Such products often originate from Turkey, Italy, China, and Thailand.

As reported by the State Inspectorate, in 2004 inspectors carried out a total of 1,869 checks on the sale of textile goods, footwear, and headgear that use registered trademarks without the permission of the trademark owners. About 1 million Euros worth of goods were seized, and infringer’s were sanctioned accordingly.

Control over the distribution and reproduction of music and cinematographic works recorded on media (CD, audio, and video tapes), as well as computer software, is regulated by the provisions of the Law on Copyright and Related Rights (Official Gazette No. 167/03). In respect of illegally recorded works of music and cinematography, in 2004 some 360 CDs, 41 audio-cassettes, and 227 videos were seized from various subjects.