What consequences for owners of Community trademarks and Community designs?
On 1st July 2013, the European Union will be enlarged to Croatia as the 28th member country.
As industrial property titles valid throughout the entire E.U., Community trademarks and Community designs will naturally be affected. They will be automatically extended to Croatia as of Midnight the 30th of June.
As regards ongoing Community trademarks or designs applications, the rule is that only the situation existing prior to the enlargement is taken into account both for the examination on absolute and on relative grounds. For example a Community trademark application filed before the 1st of July would not be refused only because it may be declared devoid of distinctive character for the Croatian public.
There is a however an exception to this rule: Community trademark applications filed since the 1st of January 2013 can be subject to oppositions based on Croatian earlier rights.
As regards already registered Community trademarks or designs, a similar rule exists according to which they can only be cancelled on the basis of a ground that was valid at the time before enlargement. For example a Community design registered before the 1st of July would not be cancelled for lack of novelty merely because an identical design had been made available to the public in Croatia prior to its registration (subject to the special definition of availability according to Community design law).
But there is also an exception to this rule because local laws and regulations must be respected. For example an already registered Community trademark which would be contrary to public policy or to accepted principles of morality in Croatia could be banned in said country but would still remain valid.
Legal adjustments are also made to neutralize potential conflicts between competing rights. Extended Community IP rights will be valid and enforceable throughout the whole E.U., including Croatia, but not against earlier conflicting Croatian rights. And holders of such Croatian rights, for example national trademarks, may even prohibit the use of extended Community trademarks in Croatia (unless the national rights were acquired in bad faith).
As a consequence of the accession of Croatia, applicants of Community trademarks or designs must immediately change their practice and adapt their strategies for protection especially as regards availability searches and examination of distinctiveness or novelty.
© [INSCRIPTA]
