EU Expansion: What Does This Mean For Your IP Rights?

 

Dr. Wolfgang Festl-Wietek, Viering, Jentschura & Partners, Munich Office

Alexander R. Schlee, Viering, Jentschura & Partners, L.A. Office

 

You have probably heard it in the news: Effective from May 1, 2004, the European Union (EU) will have 10 new member countries.  Applicants and owners of Community Trademarks (CTMs), Registered Community Designs (RCDs) and Unregistered Community Designs (UCDs) might have some questions.

 

What are the 10 new member countries?

 

·        Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia.  This will add a population of about 75 Million, bringing the total population in the EU up to 450 Million.

 

Will my existing rights extend into the new member countries?

 

·        Yes, as far as CTMs, RCDs and UCDs are concerned.

 

Do also other IP rights benefit from this extension?

 

·        No!  Since these three aforementioned rights are currently the only rights tied to the EU territory, these are the only rights that benefit from the territorial extension.

 

Would I have to pay for effecting territorial extension of my rights?

 

·        No!  The three aforementioned rights are unitary, i.e., cover the entire EU without the requirement of any designation fees, national validation formalities or national fees.  For this reason, extension takes effect automatically.

 

How are the benefits of filing CTMs altered after November 1, 2003?

 

·        If older national trademark applications or trademarks exist in the new member countries, a registered CTM or a pending CTM application filed before November 1, 2003, can co-exist with prior national registered trademarks or pending trademark applications.  However, a pending CTM application filed after November 1 can be attacked by an opposition based on an older national trademark or trademark application in one of the new EU member countries.

 

How can I find out whether my trademark was stolen already?

 

·        The authority responsible for CTM and RCD filings is the Office for Harmonization in the Internal Market  (OHIM).  OHIM has set up a “trademark consultation system” consisting of a database containing all trademark filings in the new member countries.

 

What should I do if my trademark was stolen?

 

·        If a CTM application was filed before November 1, the minimum of a co-existing right is secured, i.e., bad faith attacks against new CTM applications are prevented.  Regardless, the possibility of national lawsuits against the bad faith applicant should be investigated.