Legal Alerts / 5 Jul 2013

Legal Alert – Community Trade Marks and Registered Community Designs Extended to Croatia on 1 July 2013

Croatia joined the European Union (EU) on 1 July 2013, increasing the number of Member States in the EU from 27 to 28. From now on Community Trade Mark and Community Design applications and registrations will automatically include Croatia within the jurisdiction without the need for any additional filings or fees.

The consequences for trademark owners

As a main rule, a prior similar Croatian trademark cannot serve as basis to obtain nullity of Community Trade Mark registration or application.  However, a prior Croatian trade mark acquired prior to 1st July 2013 can be used as a ground for opposition against Community Trade Mark applications filed after 1st January 2013 (exceptional opposition rights).

In addition, national Croatian trademarks filed prior to 1st July 2013 will be able to prevent the use in Croatia of a registered Community Trademark for a similar mark. An earlier national rights holder may prohibit the use of an extended CTM in Croatia provided these earlier rights (i) were applied for or acquired prior to the date of accession of Croatia and (ii) were acquired in good faith.

Trademark owners should also review their portfolio and determine whether it is necessary to maintain Croatian trademark registrations that may already exist or not. Furthermore, 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.

The validity of Community Designs

The validity of Community Designs – both registered and unregistered – requires absolute novelty, that is to say that the design must differ in more than immaterial details from designs already made available to the public anywhere in the world. As such, Croatia’s joining of the European Union will not have an effect on whether a design is inherently capable of protection or not.

However, owners of prior Croatian design rights will be able to apply for invalidation of conflicting Registered Community Designs which are filed on or after 1 July 2013. Whilst owners of the aforementioned earlier rights in Croatia will not be able to use these rights to invalidate Registered Community Designs filed prior to 1 July 2013, they will retain the ability to prohibit the use in that country of conflicting designs which are protected by expanded Registered Community Designs filed prior to 1 July 2013, assuming that their Croatian rights were acquired in good faith.

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