Trademark owners to benefit from EU enlargement

Parties with trademark rights in EU member states will benefit from the European Council's decision to enlarge the European Union, beginning in early 2004, by allowing 10 new members: Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, the Slovak Republic and Slovenia.

Community trademark registrations and applications will be affected in the following ways:

• All existing Community trademark registrations and pending applications with a filing date prior to the date of accession will be extended automatically to include the new members without any additional fees.
  
  
• All Community trademark applications with a filing date subsequent to the accession date but which claim the priority of an application with a filing date prior to the date of accession also will be automatically extended.
  
  
• Owners of extended Community trademarks will be entitled to claim the seniority of an earlier identical registration in any of the new member states, thereby protecting claims of seniority even if owners later abandon or fail to renew their national registrations.

The issue of use will depend on the existence of priority, or earlier rights, in the new member states. 'Earlier rights' are those rights either (i) with a filing or priority date in the new member state that is prior to the date of accession, or (ii) acquired according to the new member state's applicable rules prior to the accession date. They may be in the form of national trademark registrations and applications, international registrations under the Madrid Agreement and Madrid Protocol, and well-known marks. Earlier rights also may be unregistered marks and other similar rights (eg, name and portrait rights, copyrights and industrial designs).

Earlier rights in a new member state will confer the right to prohibit the use of the extended Community trademark in that state. Thus, owners of earlier rights may have an action for trademark infringement or passing off against a confusingly similar mark. The 'junior' trademark owner will have a defence if the earlier rights are invalid or subject to attack, or if they were acquired in bad faith.

Owners of earlier rights will not have a general right to oppose or cancel the automatically extended Community mark. However, there will be a six-month opposition window to allow owners of earlier rights in the new member states to oppose applications for Community marks filed or claiming a priority date in the six months prior to the accession date. As with infringement actions, this opposition right will not be available where the earlier right was acquired in bad faith. The Office for Harmonization in the Internal Market has indicated that, because the examination process usually takes more than six months, this provision will not cause extreme hardship to applicants.

Lastly, if an existing Community mark is descriptive, non-distinctive or generic in the official language of a new member state, anyone in that member state will be allowed to use the term covered by the mark under a fair-use exception. If an extended Community mark is deceptive or is against public policy or morality in a new member state, its use may be prohibited in that country.

Jennifer L Elgin, Kilpatrick Stockton LLP, Washington DC