And then there were 28 - Croatia joins the EU

Croatia

After eight years of negotiation, Croatia finally joined the European Union on July 1 2013, bringing the number of member states to 28. This is good news for the owners and potential owners of Community trademarks (CTMs) and registered Community designs (RCDs), as protection will now extend to an additional jurisdiction. The main implications for trademark and design owners are summarised below.

  1. All existing CTMs and RCDs will be extended to, and enforceable (except against earlier conflicting national rights) in, Croatia from July 1.
  2. Prior national rights are protected. Notwithstanding the extension of existing CTMs/RCDs to Croatia, the ability to use these rights in Croatia can still be prevented by the exercise of national Croatian rights acquired before July 1 2013. Furthermore, a CTM or RCD extended to Croatia by accession is not enforceable against an earlier national right.
  3. New applications to OHIM from July 1 will include Croatia automatically, and can be filed in Croatian as an EU language.
  4. CTM applications filed between January 1 and June 30 2013 may be subject to oppositions based on earlier national Croatian rights acquired in good faith (this is known as the “exceptional right of opposition”).
  5. For CTM applications filed before July 1, ‘absolute’ grounds peculiar to Croatia will not be grounds for refusal or invalidity. For applications filed after June 30, however, Croatian ‘absolute’ grounds will be taken into account in the examination of CTM applications.
  6. RCDs extended to Croatia cannot be invalidated by reason of an earlier Croatian right that applies simply because of the effects of accession.
  7. Croatia (along with Cyprus, Mexico and Norway) is expected to make its trademark registry data available to OHIM’s TMview system in the very near future, another cost-effective benefit for trademark owners.
  8. Internally, Croatia has brought its national laws and procedures into line with the harmonisation directives for trademarks, designs, patents and other rights, and for the enforcement of IP rights, enhancing uniformity across the European Union. Cross-border injunctive relief will be available under the Community Trademark Regulation (207/2009) and the Council Regulation on Community Designs (6/2002), and the Zagreb Court has been designated as the Community Trademark and Community Design Court. The EU anti-counterfeiting Customs measures also apply from accession. In due course, patent owners should be able to take advantage of the forthcoming Unitary Patent system’s inclusion of Croatia too.

It is interesting to note how the European Union has grown in the last 19 years - when OHIM was first formed in 1994, there were only 12 member states. And there are more potential members waiting in the wings. A further five countries (Iceland, Montenegro, Serbia, Turkey and FYR Macedonia) are candidate states with the possibility that some of these may join as early as 2015, and two more (Albania and Bosnia-Herzegovina) are potential candidates. Whatever its critics might say, the growth of the EU continues to bring cost and enforcement advantages for IP rights owners.

Philip Harris, Rouse

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