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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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NOW WE ARE 28

Croatia will become the latest member of the European fold on 1 July 2013, when it finally accedes to the European Union.


​With Croatia's accession the number of EU member states rises to 28. While this single-state accession is in some ways a footnote compared to the accessions of multiple countries in 2004 and 2007, it is still noteworthy as showing that Community-wide rights such as CTMs and RCDs are investments that grow. As from 1 July 2013, existing CTMs and RCDs will be extended automatically to cover Croatia, without the need for right owners to take any steps.

As with the previous accessions, CTMs predating Croatia's accession may not in general be challenged on the basis of prior rights in Croatia. However, owners of existing CTMs should not assume that they are free to use their marks in Croatia without conducting a search first, since prior national rights may prevent the use of an extended CTM in Croatia even if the national right owners cannot oppose or invalidate the extended CTM. The need to search before launch in a new EU market is, however, well-known to brand owners who use the CTM system, and in this respect nothing has really changed.

As with the previous accessions, there are some special rules to note. In particular, CTM applications filed in the six months leading up to accession (ie, from 1 January 2013 to 30 June 2013) may be opposed on the basis of prior applications or registrations in Croatia, provided such earlier rights were acquired in good faith. From 1 July 2013 CTM applications and registrations can also be converted in Croatia as in other member states, but the effective date of conversion in Croatia

will never be earlier than the accession date of 1 July 2013, even if the CTM enjoyed an earlier filing or priority date.

CTM applications filed before Croatia's accession will not be examined for distinctiveness or descriptiveness in Croatian. However, that does not signal a landrush for CTMs comprising descriptive Croatian terms before Croatian examination kicks in on 1 July 2013. The validity of CTMs granted for marks that are inherently unregistrable in Croatian may be challenged on the basis of bad faith if obtained for the sole purpose of acquiring rights in an unregistrable term (for example, with a view to unfairly monopolising a descriptive term in Croatia).

Following 1 July 2013, CTM owners who also own national registrations in Croatia may be able to save on renewal fees by claiming seniority. Such seniority claims will enable CTM owners to allow Croatian registrations to lapse and to rely on the CTM as providing protection in Croatia as from the filing or priority date of the right from which seniority was claimed. Seniority can of course be used in this way for all EU member states and is a useful cost-management strategy in the maintenance of IP rights.

Croatia's step into the EU may therefore be a good opportunity to review portfolios generally with a view to cost-savings overall. We are happy to help with portfolio reviews and advice on how to make the most of CTMs in a growing EU market.

Croatia will become the latest member of the European fold on 1 July 2013, when it finally accedes to the European Union.

With Croatia's accession the number of EU member states rises to 28. While this single-state accession is in some ways a footnote compared to the accessions of multiple countries in 2004 and 2007, it is still noteworthy as showing that Community-wide rights such as CTMs and RCDs are investments that grow. As from 1 July 2013, existing CTMs and RCDs will be extended automatically to cover Croatia, without the need for right owners to take any steps.

As with the previous accessions, CTMs predating Croatia's accession may not in general be challenged on the basis of prior rights in Croatia. However, owners of existing CTMs should not assume that they are free to use their marks in Croatia without conducting a search first, since prior national rights may prevent the use of an extended CTM in Croatia even if the national right owners cannot oppose or invalidate the extended CTM. The need to search before launch in a new EU market is, however, well-known to brand owners who use the CTM system, and in this respect nothing has really changed.

As with the previous accessions, there are some special rules to note. In particular, CTM applications filed in the six months leading up to accession (ie, from 1 January 2013 to 30 June 2013) may be opposed on the basis of prior applications or registrations in Croatia, provided such earlier rights were acquired in good faith. From 1 July 2013 CTM applications and registrations can also be converted in Croatia as in other member states, but the effective date of conversion in Croatia

will never be earlier than the accession date of 1 July 2013, even if the CTM enjoyed an earlier filing or priority date.

CTM applications filed before Croatia's accession will not be examined for distinctiveness or descriptiveness in Croatian. However, that does not signal a landrush for CTMs comprising descriptive Croatian terms before Croatian examination kicks in on 1 July 2013. The validity of CTMs granted for marks that are inherently unregistrable in Croatian may be challenged on the basis of bad faith if obtained for the sole purpose of acquiring rights in an unregistrable term (for example, with a view to unfairly monopolising a descriptive term in Croatia).

Following 1 July 2013, CTM owners who also own national registrations in Croatia may be able to save on renewal fees by claiming seniority. Such seniority claims will enable CTM owners to allow Croatian registrations to lapse and to rely on the CTM as providing protection in Croatia as from the filing or priority date of the right from which seniority was claimed. Seniority can of course be used in this way for all EU member states and is a useful cost-management strategy in the maintenance of IP rights.

Croatia's step into the EU may therefore be a good opportunity to review portfolios generally with a view to cost-savings overall. We are happy to help with portfolio reviews and advice on how to make the most of CTMs in a growing EU market.