On July 1, Croatia is scheduled to join the 27 other jurisdictions that make up the European Union (“EU”). For the owners of Community Trademark (“CTM”) applications and registrations, their existing CTM filings will be automatically extended to Croatia without the need for any additional filings or fees. However, with the addition of Croatia, CTM owners may want to consider a portfolio review and streamlining, and if you plan to file a trademark in one or more of the EU national jurisdictions, you should consider whether a CTM filing is appropriate.
The Community Trademark Office is administered through the Office for Harmonization in the Internal Market, which is the official trademarks and designs office of the EU. The CTM provides for a single trademark registration procedure consisting of a single application in a single language, resulting in a single registration that will cover the EU and any future enlargement.
Trademark owners should plan on updating their docket systems to show the extension of the CTM to Croatia. In addition, you may wish to consider a portfolio review to determine if it is necessary to maintain Croatian trademark registrations that may already exist. In the event the Croatian registration is older than the corresponding CTM registration, a trademark owner may elect to have the seniority of the Croatian registration recorded within their CTM registration. As a general recommendation, the national Croatian registration should be maintained for five years or until the fifth anniversary of the CTM registration. After July 1, new CTM applications will automatically include Croatia within the jurisdiction.
If you are planning on filing a trademark in one or more of the EU national jurisdictions, you may want to consider whether a CTM filing is appropriate. Will the product or service be distributed in more than one country of the EU? Has a trademark search revealed any issues in any of the EU countries that might indicate that the national route is more appropriate? Generally, the cost of filing a CTM application is less than filing in any three national trademark offices. In some cases, the cost is less than filing in two of the more expensive national trademark offices such as the United Kingdom or Germany.
In the event a trademark owner owns several national registrations in the EU countries, it is possible to streamline the trademark portfolio to take advantage of these benefits without losing the priority of the existing registrations.
If the trademark owners’ products are regulated by an agency within the EU, such as the European Medicines Agency, they should be aware that the rules of the EU will now apply to sales within Croatia.