Deadline looming for hassle-free extension of Community trademark rights

European Union

Businesses wishing to benefit from the automatic and free extension of their Community trademark rights to the countries joining the European Union on May 1 2004 have until November 1 to file their Community trademark applications.

Under the terms of the Treaty of Accession, which will see 10 new countries - Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia - join the European Union, Community trademarks and designs filed before May 1 2004 will be automatically extended to the acceding countries. This means that neither a prior right in a new member state nor an absolute ground of refusal (eg, descriptiveness of a sign in one the nine new languages of the European Union) may be invoked to oppose or cancel a Community trademark application filed before May 1 2004.

However, as a transitional measure, the owners of national marks in the acceding countries will be able to file opposition or cancellation actions against Community trademark registration applications as of November 1 2003. Thus, it is advisable to file a Community trademark application (i) before November 1 2003 to avoid the risk of rejection on the basis of a prior right in a new member state, and (ii) before May 1 2004 to avoid rejection on the basis of descriptiveness in one of the nine new languages.

Filing strategies for Community designs should not be affected by the enlargement insofar as accession will not have any special impact on the examination procedure. Therefore, designs should be applied for according to the general business plan and the intellectual property strategy of the company.

On a related issue, the Office for Harmonization in the Internal Market is setting up a trademark consultation system to help spot bad-faith applications (ie, the filing, before accession, of national registrations that are identical or confusingly similar to Community trademarks). The proposed system will consist of a common database containing all recent trademark applications in the new member states. It is expected to be up and running by May 1 2004.

For background information on the consequences of EU enlargement for trademark owners, see Trademark owners to benefit from EU enlargement.

Philippe Boos and Marc-Roger Hirsch, Cabinet Hirsch & Associés, Paris

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