Enlargement 2013: Welcome Croatia!
The European Union (EU) has welcomed a new Member State: Croatia has become the 28th country to join the EU on 1 July 2013.
Like with any other enlargement, this means that as from the accession date the protection granted by Community trade marks and registered Community designs has been extended to the territory of the new Member State. Holders of CTM and RCD rights do not have to undergo any formality or pay any additional costs as a result of Croatia joining the EU.
This is the seventh time the European Union has been enlarged since its inception in 1957. The Community trade mark and the registered Community design, created in 1994 and 2003 respectively, have already witnessed two previous enlargements: 1 May 2004 with the accession of 10 countries from Central and Eastern Europe, and 1 January 2007, with the accession of Bulgaria and Romania.
All country accessions naturally trigger questions from CTM and RCD owners. We have tried to answer the most common ones.
01. Frequently asked questions regarding Community trade marks
1-1. Can my CTM be challenged on the basis of absolute grounds because of a new country´s accession to the EU?
No. For CTM registrations or pending applications up to the day of accession of Croatia, there is no possibility of contesting their validity. For example, should an existing CTM registration consist of a word which is descriptive in Croatian, this will not be a ground for filing an invalidity claim.
1-2. How are CTMs applied for before accession but which are still under examination after the accession date examined?
They are examined under the “old” rules that were applicable before accession, whether or not the actual registration takes place after accession. For example, “new absolute grounds” will not be applicable to such an application (e.g. prohibition of descriptive terms in Croatian).
Earlier rights acquired before accession in candidate countries may be relied on to oppose pending CTMs. This possibility is limited to cases where the CTM application was filed in the six-month period before accession, by virtue of an exceptional opposition right established by Article 165(3) of Council Regulation (EC) No 207/2009.
1-3. Is there any possibility of prohibiting the use of extended CTMs in Croatia?
Yes, holders of earlier national rights may prohibit the use of extended CTMs in the territory of Croatia, according to their national legislation, under two conditions:
- The earlier rights were registered, applied for or acquired in Croatia prior to its date of accession.
- The earlier rights were acquired in good faith. This provision guarantees the unitary character of the CTM system: where an earlier conflicting right exists, the extended CTM remains valid for all Member States of the EU but it cannot be used only in the territory of the new Member State.
1-4. Will CTMs filed or registered before accession be translated into Croatian?
No. CTMs that have been applied for or registered before accession will not be translated or published in Croatian. However, as from the date of accession, Croatian becomes an official language of the EU. Therefore, all CTM applied for on or after that date are translated into Croatian.
02. Frequently asked questions regarding Registered Community designs
2-1. Can my RCD be challenged on the basis of grounds for non-registrability because of Croatia´s accession to the EU?
No. For RCD registrations or pending applications there is no possibility of contesting their registrability.
2-2. Can my RCD be challenged on the basis of grounds for invalidity because of Croatia´s accession to the EU?
No. For RCD registrations or pending applications there is no possibility of contesting their validity.
2-3. Is there any possibility of prohibiting the use of extended RCDs in Croatia?
Yes, holders of earlier national rights may prohibit the use of extended RCDs in Croatia, according to their national legislation, under two conditions:
- The earlier rights were registered, applied for or acquired in Croatia prior to its date of accession.
- The earlier rights were acquired in good faith.
2-4. Will RCDs filed or registered before accession be translated into Croatian?
No. RCDs that have been applied for or registered before accession will not be translated or published in Croatian. However, as from the date of accession, Croatian becomes an official language of the EU. Therefore, all RCDs applied for on or after that date are translated into Croatian.
Useful documents
- Technical adaptations to the Community trade mark and Community design regulations after the 2013 enlargement of the EU to Croatia PDF
- Communication No 4/12 of the president of the Office concerning the enlargement of the European Union to Croatia PDF
- Enlargement section of the Manual Concerning Proceedings before the Office of Harmonization in the Internal market PDF
- Technical adaptations to the Community trade mark and Community design regulations after the 2007 enlargement of the EU to Bulgaria and Romania EN PDF
- Technical adaptations to the Community trade mark and Community design regulations after the 2004 enlargement of the EU to 10 new Members States EN PDF
