March 2003
Are you ready for the enlarged EU?
The Community Trade Mark (CTM) is one of the most successful trade marks in the world with over 120,000 registrations testament to the benefits that one registration covering all of EU countries can bring.
Ten countries, Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia will join the EU. With the expansion of the EU the CTM is in a process of change.
For the most part existing CTMs and CTM applications will be expanded to cover the new member states. This means that CTMs will automatically cover a further ten countries without the need for further examination, publication, translation, or payment of fees. This is great news for CTM owners and a wonderful opportunity for those considering CTM applications.
The major exception to the automatic expansion of rights into the new states is where there are existing rights in the new member states, such as a national registered trade mark. There is a danger that third parties will make applications in the new member states to frustrate the automatic expansion of CTM rights. There is agreement that such "bad faith" rights will not prevent legitimate CTM owners from exercising their rights in the new states. However, there is no agreement as to what "bad faith" precisely means and this will depend upon the interpretation of the national courts of the new member states. CTM applicants and owners do not have a right to object to applications being made in the new members' states in the period up to their joining.
What next?
I have a registered CTM:
Briffa recommend that existing CTM owners acquire rights in the new member states by making applications in those countries as soon as possible. This can be done by filing applications in the new member states or by making an application under the Madrid System which is inexpensive and allows a bundle of national rights to be created with just one application. The Madrid or national application may be allowed to lapse once the new member countries have joined.
I have recently made a CTM application:
Briffa recommend that CTM applicants acquire rights in the new member states by making applications in those countries as soon as possible. This can be done by filing applications in the new members states or by making an application under the Madrid System which is inexpensive and allows a bundle of national rights to be created with just one application. The Madrid or national application can be allowed to lapse once the new member countries have joined.
I am thinking about making a CTM application:
If you are thinking about applying for a CTM then after June 2002 those with earlier rights in the new member states can oppose your application. If successful your CTM will not be registered. If you make your application before July 2003 then the CTM will be effective although this will not prevent those with earlier rights exercising them alongside yours but only in the new member states.
If you would like to discuss this or any other trade mark query then please email: paul@briffa.com.