Croatia joins the European Union on 1st July 2013 extending the number of member states of the European Union to 28. Key aspects of how the enlargement of the European Union will affect European Community trade marks (CTMs) including CTMs designated under the Madrid Protocol (International registrations) and European Community designs (CDs) follow below:-
Extended CTMs and CDs on file prior to 1st July 2013
CTMs and CDs filed before the 1st July 2013 will automatically be extended to Croatia. CTM and CD owners are not required to take any action to cover Croatia: extension of coverage will automatically apply on the 1st July 2013 without any additional official fees being payable. CTM applications filed before 1st July 2013 may not be refused registration on the basis of Croatia-specific absolute grounds, for example a CTM application cannot be refused registration on the grounds that the mark is descriptive in Croatian. Similarly, extended CTMs cannot be invalidated on new absolute grounds simply due to the accession of Croatia. Extended CTMs and CDs will not be translated or published in Croatian.
Extended CTMs filed between 1st January 2013 and 1st July 2013
Whilst extended CTMs may not be opposed or invalidated on the basis of earlier national rights which were registered, applied for or attained prior to the date of the accession of Croatia, it should be noted that CTMs filed between 1st January 2013 and 1st July 2013 may be subject to opposition or invalidation based on earlier Croatian rights obtained in good faith. If such proceedings are successful, it could result in the refusal or invalidation of the CTM due to its unitary nature.
Use of Extended CTMs and CDs in Croatia
An earlier national right could be used to prohibit the use of an extended CTM or CD in Croatia where the earlier national right was registered, applied for or acquired prior to the date of the accession of Croatia unless the national right was acquired in bad faith.
Prior to using a trade mark or design which is automatically protected by an extended CTM or CD in Croatia, consideration should be given to conducting an availability search to ensure that no earlier national rights exist that could prevent use of the trade mark or design in Croatia.
CTMs and CDs filed on or after 1st July 2013
With respect to CTMs and CDs applied for on or after 1st July 2013, they will cover all 28 European Union member countries including Croatia but unlike in the case of extended CTMs, CTM applications filed on or after this date may be refused protection on the basis of absolute grounds arising from Croatia.
Croatian will become a recognised CTM language as of 1st July 2013 and applications filed from 1st July and onwards may be filed in Croatian.
CTM Seniority Claims
It will be possible to claim seniority from existing national Croatian trade mark registrations from 1st July 2013. Subject to meeting the European Community Trade Mark Office’s seniority claim requirements, if seniority is claimed from an earlier Croatian trade mark registration and the earlier registration is then subsequently surrendered or allowed to lapse, the brand owner will continue to enjoy the same rights as if the national registration had been maintained.