Authors: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA, Erikas Saukalas, an Associate Partner, Head of International Relations Division in METIDA
As Croatia joined the European Union, the territorial protection of intellectual property objects expanded. All Community trademarks and registered Community designs have acquired an additional protection in the new Member State. However, trademarks and designs registered before the 1st July 2013 will not be argued based on these grounds.
The proprietors of Community trademarks or registered Community designs do not have to carry out any additional administrative actions or pay any additional fees in order to protect their intellectual property objects in Croatia.
As it is known, one of the applied requirements for the Community trademarks is that the filed Community trademark cannot be descriptive and indicative of characteristics of goods and services in any of the official European Union languages. Since Croatian has also become one of the official European Union languages, from now on the compliance with this requirement will also be assessed in regards to Croatian language.
However, this absolute requirement will not be applied to the already registered Community trademark or to the applications filed until the accession date. For example, if the registered Community trademark consists of a word, which in Croatian is descriptive it will not be considered as a ground for the Community trademark to be acknowledged as invalid.
The analysis of the applications for Community trademark registration filed before Croatia’s membership will be carried out under the “old” requirements, which were valid until the Croatia’s accession date regardless of whether the registration of the trademark is processed before or after it.
Owners of the prior rights in Croatia will be allowed to file oppositions against Community trademark applications only if they have been filed in the six-month period (from 1st January 2013 until 30th June 2013) before the accession, based under the exception in the Council Regulation.
However, the expansion of the territorial protection of Community trademarks is not absolute. According to the national law, the proprietors of the national registrations in Croatia can prohibit the validation of Community trademark in Croatia’s territory if the following two conditions are satisfied: (i) the earlier Croatian rights were registered, applied for or acquired before the accession date and (ii) in good faith. (i.e. without improper intentions in respect to Community trademarks). This principle ensures the unity of the Community trademark system. Indeed, when a conflict arises due to previous rights, the Community trademark valid in the new Member State remains valid in all Member States, however it cannot be used in the new Member State. An identical principle is applied when the Community design is registered.
The positive aspect associated with the EU expansion in this case is that exclusive rights for the Community trademark may be gained even in a wider territory only within one filed application for Community trademark registration and there will be no need to file a separate national application in Croatia.
After the expansion of the EU territory, it is important to remember one of the main requirements for the validity of the Community trademark registration, specifically, a requirement for a trademark to be used.
Even though Community trademark law does not anticipate usage requirements for the trademark registration, it is considered as a supporting condition of the Community trademark registration. When assessing the usage of the Community trademark, a problem occurs regarding the territory of the trademark usage, as the Community trademark has protection in all now 28 member countries.
Court practice has consolidated that the trademark has to be used in a “significant” part of the territory, thus it is essential to emphasize the importance of the “actual” usage in a wider part of the territory where the trademark is protected. Yet, it must be noted that only the usage fact is not sufficient enough, as the extent of the usage is also taken into account which in every individual case is assessed differently, based on the type and specifics of goods and services that the trademark marks. Nonetheless, even the usage in a relatively limited territory can be considered sufficient, since the territory of the usage is only one factor from a few which has to be evaluated when taking into consideration other case’s circumstances.