Good news for IP owners – extra protection in Europe for free

Those familiar with protecting trade marks and designs in Europe will already be aware of the unitary system which has been in place since 1996, providing either trade mark protection or registered design rights via one registration for the whole of the European Union (EU). 

On 1 July 2013, the benefit of owning a Community Trade Mark (CTM) or a Registered Community Design (RCD) is extended as Croatia becomes the latest country to join the EU, expanding the number of member states to 28. The last time new countries joined the EU was in January 2007, when Bulgaria and Romania became new members.

All existing CTMs and RCDs, whether already registered or still pending as applications before the Office of Harmonization for the Internal Market (OHIM), will automatically be extended to cover Croatia on 1 July 2013.

In addition, the geographical scope of Unregistered Community Design Rights will also be extended, meaning that any such unregistered rights that are already in existence before 1 July 2013 will provide protection in Croatia as well as the other 27 member states of the EU for the remainder of their three year term.

Whilst the scope of protection provided by a CTM or RCD will extend to Croatia from 1 July 2013, it is worthwhile being aware that the right to actually make use of such a CTM or RCD in Croatia from 1 July 2013 onwards can be opposed by a third party which has a pre-existing Croatian right that conflicts with the CTM or RCD, provided that this Croatian right was obtained in good faith.

Also, the validity of CTMs filed since 1 January 2013 can be opposed based on a pre-existing Croatian trade mark right if the filing or priority date of the Croatian trade mark pre-dates the filing or priority date of the CTM, provided that the Croatian mark was applied for in good faith.

Further guidance on the consequences of Croatian accession to the EU for your own IP portfolio will be provided by your usual attorney on request.

Rosalyn Newsome and Yvonne Johnson