27/05/2013
Reddie & Grose patent and trade mark attorney Helen Wakerley talks through some of the issues.
There are 27 countries in the EU, but on 1st July 2013 the count increases to 28 with the inclusion of Croatia. A country south of EU members Slovenia and Hungary and north of non-EU country Bosnia & Herzegovina, Croatia is famous for sailing and beaches, with a coastline boasting more than a thousand islands.
Following Croatia’s Accession, How Should I Now Obtain Protection In The Whole Of The EU?
For patents, there is still no single Unitary Patent covering the EU. However, you have, before today, been able to validate your European granted patent (EP) in Croatia. If you need pan-EU protection, please continue to include Croatia in the list of candidate countries.
For trade marks and designs you will, if you have existing unitary EU rights, gain an automatic extension to cover Croatia. Your community trade mark registrations (CTMs), Community design registrations (CRDs) and unregistered Community design rights roll into Croatia without any action on your part. You do not have to pay any fees now or extra charges on renewal.
What If Someone Has Rights Already In Croatia?
Existing rights, if they are going to cause you problems, will tend to be on the trade mark side. The validity of a design may be called into question based on lack of novelty over a pre-published design found anywhere, not just in an EU country. The two key considerations for trade marks are:
- What does the mark mean to someone in Croatia? and
- Is there someone in Croatia with an earlier right?
The official language in Croatia is Croatian. So any CTM filed on or after 1st July 2013 could face an objection if the mark is descriptive, of geographical significance, or offensive to a Croat.
What If My Mark Falls Into One Of Those Categories? Should I Check What My Existing Marks Mean In Croatian?
No. It is not possible to attack a CTM mark that is already registered or that is the subject of a CTM application filed before 1st July 2013 in this way. Having said that, it is the filing date which has to be before 1st July 2013, not the priority date. If you are worried, filing before 30th June is advisable.
If By Chance My Mark Is Used Generically Already In Croatia, Can I Now See This As Infringement And Take Action?
No. The transitional provisions will stop you doing this.
I Have An Application For Which I Am Presently Arguing Acquired Distinctiveness. It Is A Shape Mark, So Means As Much To Croats As To People Elsewhere. Do I Have To Now File Evidence Of Use In Croatia?
No, not if your filing date is before 1st July 2013.
What If Someone Has Already Registered A Similar Mark In Croatia? Do I Have To Search And Check The Validity Of All My CTMs?
No, the owner of an earlier right in Croatia is not allowed to oppose or apply to cancel anything you have filed at OHIM before 1st July 2013. However, there is one exception. Earlier right holders are allowed to oppose anything you filed between 1st January 2013 and 30th June 2013 if their Croatian right was applied for in good faith. This applies to opposition only, and if there is a suspicion that the opponent went to the Croatian register deliberately to give them grounds for opposition, they can expect a bumpy time during the opposition. If they miss the opposition window, they cannot apply to cancel the registration, and OHIM will not be sending them a notification of the chance to oppose, so they would also have to be watching the OHIM register to find your CTM application.
For any CTM application you file on or after 1st July 2013, earlier Croatian rights can be relied upon, in the same way as any other earlier rights, and in the OHIM opposition proceedings, the question of good (or bad) faith would not be debatable. You would have to bring a separate local invalidity action to challenge the validity of their rights.
Again, it is the CTM filing date which is important, not the priority date. So, as mentioned above, if you have potential CTM applications in the pipeline, you can improve the risk of success by filing before the end of June 2013.
I Have Some National Registrations In Croatia Already, Do I Need To Maintain Them?
You can decide that a CTM gives you the protection you need and drop the Croatian rights at the next renewal date. You can also log the fact that they exist on the OHIM register in a claim to seniority and then once the national registration has lapsed, rest assured that you can convert back to the original Croatian date if anything were to happen to the CTM.
What About Enforcement? Can I Use My CTM After 1st July 2013 To Sue Someone For Trade Mark Use In Croatia?
Not necessarily. It depends on whether they have previous use there of the mark in good faith.
It Sounds Complicated
Yes, but the OHIM and EU member states have been through this before, the last time in 2007 when Romania and Bulgaria joined.
Is It Just Croatia This Time?
Yes. Looking prospectively at South Eastern Europe, Serbia, Montenegro and the Former Republic of Macedonia are all EU candidate countries but a date has not yet been set for accession.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
