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File applications for EU-wide trade mark protection before 1 May 2004 The author of this article is Gary W A Johnston LLB (Hons) RTMA MITMA, senior trade mark attorney with the Manchester office of European trade mark attorneys William A. Shepherd & Son Limited.

Enlargement of the European Union - Effect upon the community trade mark system

As you are no doubt aware, the European Union has decided to expand its numbers by offering membership to a further ten countries; namely; Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovak Republic, Slovenia

This process of increasing/broadening the size of the European Union has been labelled “Enlargement”, and will take place in May 2004. Needless to say, this expansion will have significant implications upon all aspects of the functioning of the EU including the Community Trade Mark (“CTM”) System. With regard to such system, the information below provides a summary of the main points of note :

• All CTM registrations and applications existing at the date of Enlargement will, with effect from such date, be automatically extended to the new member countries, without the need to submit a formal request or pay any official fees
• The same should also apply to CTM applications filed after the date of Enlargement but claiming Priority from an application filed during the immediately preceding six months
• National Trade Mark Rights existing in the new member states at the date of Enlargement will be deemed earlier rights which may be invoked against an existing CTM registration or a new CTM application
• Such earlier rights will confer upon their proprietors the right to exclude the use, in their territories, of an automatically extended CTM (provided that these rights are not invalid/vulnerable or were acquired in bad faith)
• Such rights do not, however, confer on their proprietors the right to either Oppose a CTM application which has been automatically extended or to request the Invalidation of an CTM registration which has been automatically extended
• An exception, enabling the proprietor of an earlier national right to Oppose a CTM application subsisting at the date of Enlargement, exists where that application has a filing date (whether actual or as the result of a Priority claim) which is within the period of six months immediately prior to the date of Enlargement
• From the date of Enlargement, automatically extended CTM registrations may be enforced in the new member states. In addition, they must be admitted as a ground for invalidation in those territories
• Likewise, from such date automatically extended CTM applications must, in all the new member states, be raised as a basis for Refusal and/or admitted as a basis for Opposition against later-filed applications
• Proprietors of automatically extended CTM registrations and applications will, from the date of Enlargement, be entitled to claim the Seniority of an earlier identical registration (that is, same Mark/same goods) existing in any of the new member states.

As you can see, therefore, there is plenty to consider for the proprietors of international Trade Mark portfolios and traders with international interests, alike. Both need to consider their existing rights and what effect(s) the expansion of the CTM system will have upon their businesses; particularly if the right to at least use their Trade Mark(s) in one or more of the new members states is especially important.

In the circumstances, it seems inevitable that, initially over the coming six to twelve months, businesses will give substantial consideration to :

• Conducting clearance Searches to determine the state of the national registers in the new member states
• Placing in hand Watch Services to monitor the position in those territories prior to Enlargement
• Filing national applications to preserve/establish their position in the new member states
• Filing CTM applications prior to 01 May 2004 in order to take advantage of securing protection in the 10 additional Member States at no cost. It is inevitable that the costs involved in securing a CTM post-May 2004 will increase - perhaps significantly, certainly proportionately.

The author of this article is Gary W A Johnston LLB (Hons) RTMA MITMA, senior trade mark attorney with the Manchester office of European trade mark attorneys William A. Shepherd & Son Limited.

William A. Shepherd & Son Limited - January 2004

The content of this newsletter is merely informative and should not be relied upon a a substitute for legal advice.