On 1 July 2013, Croatia will become the 28th Member State of the European Union.
What is the legal impact of this extension of the European Union on your intellectual property rights?
If you own Community trade marks or designs registered before 1 July, the Regulation on Community trade marks (Regulation (EC) 207/2009, hereafter "CTM Regulation") and the Regulation on Community designs (Regulation (EC) 6/2002, hereafter "Community Design Regulation") provide for two major legal consequences resulting from the integration of Croatia:
- The automatic extension, with no formality or additional cost, of Community trade mark and design protection to the entering state, i.e. Croatia (Articles 165(1) of the CTM Regulation, and 110a(1) of the Community Design Regulation)
- Maintenance of rights acquired by Community trade marks and designs
Community trade marks or designs registered before 1 July 2013 may not be disputed on absolute grounds, such as the ban of descriptive terms in Croatian or the absence of distinctive character, pursuant to Articles 165(2) of the CTM Regulation and 110a(5) of the Community Design Regulation.
However, the use of these newly extended Community trade marks and designs may be banned in Croatia by the proprietor of a prior national right acquired in good faith before 1 July 2013 in accordance with Articles 165(1) of the CTM Regulation and 110a(3) of the Community Design Regulation.
Therefore, Community trade marks and designs remain valid in all Member States of the Union but cannot be used in Croatia when a prior right exists.
It is important to note that the Community Trade Mark Regulation provides for an exception to the principle related to the maintenance of rights acquired by the Community trade mark: applications for Community trade marks filed between 1 January and 30 June 2013 may be the subject of opposition on the ground of prior rights in Croatia, in accordance with Article 165(3) of the CTM Regulation.
Finally, a claim of an extended Community trade mark's priority in Croatia may only be filed as of 1 July 2013 (even if the effective priority date is much earlier).
The same applies as well to transformations into national trade marks, within the meaning of Article 112 of the CTM Regulation, which again are only possible as of 1 July 2013, even if the Community trade mark to be transformed was registered well before said date.
LAVOIX recommends to plan on claiming the seniority of your national or international trade marks that designate Croatia in your existing Community registrations.
Publication date : June 2013