Mark owners should reconsider strategies following EU enlargement

European Union

Trademark owners are advised to reconsider the management of their portfolio following the accession to the European Union of 10 new member states (Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia) last month. The enlargement has implications for trademark owners at all levels of trademark portfolio management.

Before filing a Community trademark application, mark owners must now check whether their trademark is available in all 25 member states. They should also consider checking the translation of their mark in the newly admitted languages (Czech, Estonian, Hungarian, Latvian, Lithuanian, Maltese, Polish, Slovak and Slovene) when the mark consists of a common word or expression. Applicants should also consider the common understanding of the trademark for the average consumer in the 10 new states. These language and understanding considerations should be included in the marketing process leading to the creation of a trademark in order to avoid problems when filing.

In any case, it may be more cost-effective to apply for an international registration through the Madrid Protocol instead of filing a Community trademark application to cover the new member states (except for Malta, which is not member of the Madrid system): each Community trademark application now runs a 40% risk of being opposed (recent statistics from the Office for Harmonization in the Internal Market show a 144% growth in opposition cases in 2004, which are probably attributable to the fact that owners of prior national registrations in the new member states have been allowed to file oppositions since November 1 2003). Another possibility is to file separate national applications, which also offer the possibility of filing in the local alphabet.

Where a Community trademark is already registered, the mark owner should verify whether an identical national mark exists in any of the 10 new member states. If it does, the mark owner may want to consider the seniority claim pursuant to the Community Trademark Regulation and progressively abandon its national registrations as terms expire. If there is no identical national mark, the mark owner should still conduct prior rights searches to ascertain that the use of the registered Community trademark is authorized in those 10 countries. Otherwise, such use would be liable to actions from third parties, which would endanger the Community trademark in its entirety.

Lastly, it is in all cases advisable that mark owners:

  • extend their mark monitoring policy to include the new countries and languages;

  • consider distribution agreements with non-EU companies as the 10 new member states now comply with the principle of European Economic Area-wide exhaustion of trademark rights; and

  • take into account the specific legal provisions governing domain names in the new member states.

For background information on the EU enlargement, see Deadline looming for hassle-free extension of Community trademark rights.

Ladan Khaksar, Inlex Conseil, Paris

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