EU enlargement by probably 10 countries on 1 May 2004 will add a new dimension to clearing and registering brands in Europe, and long before 2004, too, as reported by us and trade mark agents Castles
Topic: Brands
Who: The European Union
When: December 2002
Where: Brussels
What happened:
It was formally announced that barring unforeseen circumstances, there should be no less than ten new European Union member states with effect from 1st May 2004. These look to be what have been nicknamed "The Vilnius Ten", Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia. At the moment it is possible to register a trademark throughout the European Union by way of a single "Community Trade Mark" ("CTM") application filed with the CTM Office in Alicante. What will be the effect of EU enlargement on the whole CTM registration process and on brand selection and maintenance procedures generally? Below is a detailed note on the implications kindly provided to us by Mark Hickey of Trade mark agents Castles, but the bottom line here is that EU enlargement will have a significant effect on prudent searching strategies when trying to establish whether a brand is available for use in the European Union and for registration as a CTM.
This is driven by provisions in a chapter focussing on intellectual property that forms a part of the documentation surrounding the EU enlargement negotiations.
A key provision here indicates that if a CTM is applied for at any point during a period of six months prior to "enlargement" (in other words between 1 November 2003 and 1 May 2004) then this CTM could be opposed on the basis of existing trademark rights in any of the new, "EU enlargement" states.
Why this matters:
The effect of this is that come 1st November 2003 at the very latest, and perhaps from now on, prudent brand owners investigating the availability for use across the EU of a proposed new trademark should conduct searches not just across current EU member states, but also in each of the ten new "enlargement states". This may add time and cost to the clearing process, but compared with the aggravation that can result from opposition from the owner of a potentially conflicting mark, this has to be a worthwhile investment.
Now here's the full monty from Mark Hickey of trade mark agents Castles (mark@castles-ipa.co.uk)
COMMUNITY TRADE MARKS AND THE ENLARGEMENT
OF THE EUROPEAN COMMUNITY
Discussions are currently ongoing with twelve countries with regard to their future membership of the European Union.
The countries are as follows:
Bulgaria
Cyprus
Czech Republic
Estonia
Hungary
Latvia
Lithuania
Malta
Poland
Romania
Slovak Republic
Slovenia
Turkey
Accession will take effect on 1 May 2004 with the probable exceptions being Romania and Bulgaria (likely to be 2007) and Turkey (2010).
The negotiations include a chapter on intellectual property; Chapter 5 in which the extension of a Community Trade Mark to new member states is considered.
Community Trade Marks
As a Community Trade Mark is a unitary right covering all member states of the European Union, then inherently it must automatically extend to a new member state.
This raises problems with regard to earlier rights held by other parties in the new member state and the effect these can have on the Community Trade Mark, not only in the new state but also as a whole. Agreement has been provisionally reached to resolve these difficulties and the proposals are as follows:
Automatic Extension – all Community Trade Mark registrations or applications granted or pending at the time of enlargement will be automatically extended.
They will cover the entire territory of the new member state from the date of enlargement and will be enforceable in that state from this date.
They will also become “earlier rights” in the new member state from the date of enlargement. Therefore, to the extent required or allowed by national law, they may be raised as citations and admitted as the basis for oppositions or invalidation actions.
After the date of enlargement, a Community Trade Mark application will be examined in exactly the same manner as at present in that if the mark has a meaning in the language of a new member state it may be refused.
Opposition
Subject to the exception discussed below, proprietors of an earlier right in an enlargement country do not have the right to oppose or invalidate a CTM application or registration subsisting at the date of enlargement.
However, if the filing date of the CTM falls within the six month period before the date of enlargement, then the exception applies and earlier national rights may be used as the basis of an opposition.
THEREFORE, WHEN CLEARING A MARK FOR USAGE IN THE EU, THE COUNTRIES LISTED ABOVE SHOULD BE COVERED BY ANY SEARCHING STRATEGY AT THE VERY LEAST FROM 1 NOVEMBER.
An opposition will be rejected if it can be shown that the earlier right was filed merely to provide a basis for opposing a CTM.
Earlier Rights as Obstacles to Use
The proprietors of “earlier rights” can use them as the basis for action against the use of an extended Community Trade Mark in their territory. As there is no automatic bar to an infringement action simply because a CTM is registered, this merely reflects the existing legislative scheme.
In response to a threat to usage based upon an earlier right an invalidation action may of course be considered.
However, the date of the Community Trade Mark itself, even if it predates this “earlier right” is irrelevant from the perspective of a possible invalidation action. It is the enlargement date which must be compared to the date of the earlier right.
Earlier rights will confer on their proprietors in accordance with their national law the right to exclude the use of an extended Community Trade Mark in the territory. Issues of first use and other possible defences may or may not be relevant depending upon national practice.
However, if these rights were acquired in bad faith with knowledge of the Community Trade Mark registration and its possible extension, then such rights do not confer on the proprietor the right to prevent the use of the extended Community Trade Mark.
Absolute Grounds
An existing Community Trade Mark application cannot be refused by the Community Trade Marks Office based upon the language, law, etc., of the new territories on extension. This is true even if the mark has not yet been examined.
An invalidation of a Community Trade Mark registration filed before the date of enlargement cannot be based upon the language, law, etc., of the new territories, again, whether or not it became finally registered before the enlargement date.
The examination of Community Trade Mark applications filed after the enlargement date will include a review of the language, law, etc., of the new territories which can be used as the basis for refusal on absolute grounds.
Where it can be shown that an existing mark is descriptive, non-distinctive or generic in a certain country, users in that country can invoke the Fair Use Exception Article 12.
Administration
From the date of enlargement, seniority claims can be filed on a Community Trade Mark based upon rights in the new member territory and if a Community Trade Mark is refused, it is possible to convert same into a national application in the new territory.
All existing Community Trade Mark applications and registrations at the date of enlargement will automatically extend despite there not being a translation into the language of the new member state of the specification, etc., of the application. For marks filed on or after the date of enlargement, the normal language rules of the Office apply in that a mark can be filed in the language of the new member territory and the specification will be translated into the languages of all the member territories including the new member territories by the Office and will be used in the publication of accepted marks.
