Date of application for extended Community trademarks clarified

The Slovenian Intellectual Property Office (SIPO) has issued a decision clarifying the application date for Community trademark applications extended to Slovenia following its accession to the European Union (Decision 670-1069/04-VV-5, November 29 2004).

On May 1 2004 Slovenia became a member of the European Union and consequently became a part of the Community trademark system. The first paragraph of Article 142a of the Community Trademark Regulation states that:

"As from the date of accession of the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia, (hereinafter referred to as 'new member state(s)'), a Community trademark registered or applied for pursuant to this regulation before the date of accession shall be extended to the territory of those member states in order to have equal effect throughout the Community."

It was not clear under Slovenian law, however, whether extended Community trademarks have effect against national trademarks as of their application date or as of May 1 2004 (the date of accession). The SIPO has now clarified this issue in a decision relating to the registration of the trademark PLOPP.

Brauhaus Altenkunstadt Andreas Leikeim GmbH & Co KG applied to register PLOPP as a Community trademark on June 11 2003. Due to difficulties with registration, Brauhaus decided to convert this trademark into national applications, including one for Slovenia. On conversion of the Community trademark application, the SIPO assigned it the application date of May 1 2004, even though it was filed on June 11 2003.

It can, therefore, be expected that in cases of conflicts between Community trademarks and national marks, all Community trademarks applied for registration prior to May 1 2004 will be deemed as having the application date of May 1 2004. This in practice means that the holders of extended Community trademarks will be able to challenge only those Slovenian national applications that have an application date or, where relevant, a priority date later than May 1 2004.

Gregor Macek, ITEM doo, Ljubljana

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