On 1 July 2013, Croatia will join the European Union and membership of the Community Trademark (CTM) will extend to 28 countries. At present, the 27 countries covered by the Community Trademark are Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, The Netherlands and the UK.
At the date of accession, Croatia will be added to the countries protected by the Community Trademark (a cost effective mechanism to obtain pan-European registration under cover of a single Trademark Registration) and existing Community Trademark rights will extend to and be enforceable in Croatia, without the payment of additional filing fees.
For parties wishing to obtain Trademark protection throughout Europe, it is advised to file a Community Trademark Application before 31 December 2012, after which date, national rights holders in Croatia can seek to oppose or invalidate a Community Trademark Application or Registration, based upon prior national rights in Croatia.
Once the six month period prior to entry has been entered, Croatian rights holders will be able to assert their prior rights against CTM Applications via opposition and invalidity proceedings. If successful, the CTM Application will fail due to its unitary nature, although it can be converted into national Applications in other countries but this process is costly.
Another phenomenon of the CTM system is the ability to claim “seniority” from corresponding national Trademark Registrations in other Member States, provided that the respective Trademarks and owners are identical and the specification of goods/services is the same or narrower. This means that on renewal, the national Registration can be allowed to expire but the benefit thereof is deemed to continue by virtue of the seniority claim in the CTM Registration. Once Croatia accedes to the CTM system, seniority can be claimed from a Croatian Trademark Registration.
It is important to note that a CTM Application filed during the six month period prior to accession cannot be challenged based upon a ground which applies only because of Croatia’ s accession to the CTM system. After accession, grounds of opposition/invalidity in all 28 Member States will be relevant.
Once Croatia joins the EU and enjoys the associated benefits, including the free movement of goods, businesses are expected to explore the commercial benefits of this untapped European market. If the Croatian market is of potential interest to your business, a proactive approach is encouraged, including the conducting of clearance searches to explore the existence of relevant registered rights in Croatia and also, general market checks for unregistered rights.