Likelihood of Confusion in Croatia Under Article 6(1): Similarity of Marks and Goods

Relative grounds are where many commercially significant trademark disputes in Croatia are decided. Even a mark that is perfectly acceptable on absolute grounds can still be blocked after publication if it conflicts with an earlier right under Article 6 of the Trademarks Act 2019. For applicants and their legal teams, this doctrine matters because Croatia does not examine prior rights ex officio. That means a brand may survive examination, be published, and then face opposition from a senior rights holder. Understanding the Croatian likelihood-of-confusion analysis is therefore essential both for pre-filing clearance and for defending or bringing opposition proceedings.

The Legal Framework: Article 6 and Related Provisions

• Article 6(1)(1): Refuses registration, upon opposition, where the applied-for sign is identical to an earlier trademark and the goods or services are identical.
• Article 6(1)(2): Refuses registration, upon opposition, where because of identity or similarity of the marks and identity or similarity of the goods or services there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark.
• Article 6(2): Defines what counts as an earlier trademark, including national and international rights effective in Croatia and certain pending applications with earlier priority once registered.
• Article 27: Creates the opposition procedure through which Article 6 is enforced.
• Article 28: Regulates admissibility and conduct of opposition proceedings, including response by the applicant.
• Article 29: Includes procedural rules relevant to proof of use of the earlier mark where applicable.
• Article 35: Applies the Nice Classification, which structures goods and services but does not by itself determine similarity.

The Likelihood of Confusion Test

The Croatian test under Article 6(1)(2) is holistic. The Office asks whether the relevant public is likely to believe that the goods or services come from the same undertaking or from economically linked undertakings. Actual confusion need not be shown. The inquiry is prospective and based on the overall impression created by the marks in relation to the goods or services.

Several principles follow from the text of Article 6(1)(2). First, mark similarity and goods or services similarity are interdependent. A greater degree of similarity in one area may compensate for a lesser degree in another. Very similar marks may conflict even where the goods are only similar rather than identical. Conversely, identical goods increase the sensitivity of the comparison.

Second, the analysis is undertaken from the perspective of the average Croatian consumer of the relevant goods or services, who is deemed reasonably observant and circumspect but who rarely compares marks side by side. Memory is imperfect. This is especially important in word-mark disputes involving similar beginnings, endings, or overall rhythm.

Third, all relevant dimensions of similarity are considered: visual, phonetic, and conceptual. No single factor always prevails, but their weight varies by mark type and market context. Word marks often place strong emphasis on phonetic and visual similarity. Figurative marks may turn more on visual and conceptual correspondence. Combined marks require assessment of the dominant and distinctive elements.

Fourth, the distinctiveness of the earlier mark matters. A more distinctive earlier mark generally enjoys a broader scope of protection, while an earlier mark containing weak descriptive matter may command a narrower monopoly. This does not mean weak earlier marks are irrelevant, but it affects how readily confusion is found.

What DZIV Considers in Comparing Marks and Goods

Visual similarity

DZIV considers the appearance of the marks as a whole, including length, structure, shared elements, position of letters, and layout. Similar beginnings may be particularly influential because consumers often pay more attention to the start of a word. In combined marks, the Office also reviews the size and prominence of images, color if claimed, and the overall visual composition.

Phonetic similarity

The Office examines how the marks sound when spoken in Croatian. Even where spelling differs, similar pronunciation can produce substantial conflict. This matters especially for retail goods, hospitality, consumer services, and other markets where marks are requested orally. Foreign words are assessed in light of likely Croatian pronunciation.

Conceptual similarity

If the marks convey the same meaning or idea, conceptual similarity can strengthen the case for confusion, especially where the meaning is readily understood by Croatian consumers. Translation equivalents can therefore matter. A Croatian term and its English equivalent may create conceptual overlap if both are understood by the relevant public.

Goods and services similarity

Nice class identity is a starting point but not the end of the analysis. DZIV considers the nature, purpose, method of use, trade channels, complementarity, and whether consumers might reasonably expect the goods or services to come from the same source. Identical goods create the highest risk. Similar goods can also suffice where the marks are close. Dissimilar goods generally reduce risk substantially, though they do not always eliminate it in every advanced trademark system.

Dominant and distinctive elements in combined marks

For combined marks, DZIV focuses on the components that most strongly affect consumer perception. Descriptive or decorative matter usually carries less weight. If both marks share a distinctive word element and differ only in secondary design features, confusion is often more likely. If the shared element is weak and the design or additional wording is dominant, the applicant has a stronger defense.

Language considerations are important in Croatia. The Office will consider Croatian meaning first, but English and other familiar foreign words may also affect conceptual comparison. Applicants should therefore evaluate not only literal spelling differences but also translated meaning and local pronunciation.

Key Case Law

No leading Croatian opposition decisions have been published in a consistently accessible form that establishes a uniquely national formulation of the Article 6(1) confusion test. In practice, DZIV applies the statute in line with broader European trademark principles.

Sabel v Puma [1997] — an influential European authority confirming that likelihood of confusion must be assessed globally and that association is part of the legal test but does not replace confusion itself.

Canon [1998] — a leading authority on the interdependence of mark similarity and goods similarity, frequently relevant to Croatian practice under Article 6(1)(2).

Lloyd Schuhfabrik Meyer [1999] — important for the average consumer standard and the role of imperfect recollection in confusion analysis.

Medion [2005] — relevant to combined marks and the possibility that an element with an independent distinctive role can drive confusion even within a larger composite sign.

These are not Croatian cases, but no leading Croatian cases have been published that displace the utility of these broader principles for Article 6 analysis.

The Procedure for Responding to a Relative-Ground Opposition

1. Check the admissibility and scope of the opposition

Verify whether the opposition was filed within the three-month period under Article 27 and whether the opponent has identified qualifying earlier rights under Article 6(2).

2. Compare the goods and services carefully

Many oppositions can be narrowed by identifying which goods or services truly overlap and which do not. A partial surrender or amendment may save the application.

3. Analyze the marks by dominant elements

For combined marks, determine what consumers will actually remember. If the common element is descriptive or weak, emphasize the distinct visual, phonetic, and conceptual differences.

4. Consider requesting proof of use where available

If the earlier mark is old enough and the law permits, challenge whether the opponent has used the mark for the relied-upon goods or services. This can narrow or defeat the opposition.

5. Negotiate if commercially sensible

Coexistence agreements, consent, or goods limitations may resolve the dispute, though DZIV will still assess public-interest aspects where necessary.

6. File a focused legal response within the deadline

The applicant generally has 60 days from notification to respond. The response should address each mark comparison dimension and each product category, not just state a conclusion.

Strategic Recommendations

• Recommendation: Conduct Croatian clearance searches before filing even though DZIV does not cite prior marks ex officio.
• Recommendation: Compare candidate marks in visual, phonetic, and conceptual terms, not merely by exact spelling.
• Recommendation: For combined marks, assess whether a shared element is actually distinctive enough to dominate the comparison.
• Recommendation: Draft goods and services with commercial realism, because unnecessary overlap invites opposition under Article 6(1)(2).
• Recommendation: In opposition defense, identify weak elements in the earlier mark and exploit any differences in concept, pronunciation, or market context.
• Recommendation: Consider proof-of-use strategy early where the earlier mark may be vulnerable.

Common Mistakes

• Mistake: Assuming that a small spelling change avoids confusion where pronunciation and concept remain close.
• Mistake: Treating Nice class differences as decisive even when the goods are commercially similar.
• Mistake: Ignoring translation equivalents and foreign-word meanings that may create conceptual similarity in Croatia.
• Mistake: Overemphasizing secondary design features when the marks share the same dominant word element.
• Mistake: Failing to respond fully to an opposition within the statutory time, which can result in refusal within the scope of the opposition.

Key takeaway: Under Article 6(1), Croatian relative-ground analysis is a global assessment of mark similarity, goods similarity, and consumer perception, with special importance given to dominant elements in combined marks. Because DZIV does not raise prior rights on its own, pre-filing clearance and disciplined opposition strategy are the applicant’s main tools for managing confusion risk.