Brand owners need to consider a number of matters relating to current and future IP rights.
Existing CTMs and RCDs filed before July 1, 2013
Registrations and applications filed before or claiming priority before July 1, 2013 will be extended to Croatia (so called “extended CTM or RCD”). The holder does not have to take any action, it will be automatically extended on July 1 and will have equal effect in Croatia. As of July 2013, Croatian will become a recognized CTM language but extended CTMs and RCDs will not be translated into or published in Croatian.
Extended CTMs and RCDs filed between January 1 and June 30, 2013
CTMs and RCDs filed during this period may be subject to opposition and invalidity proceedings based on earlier Croatian national rights. This means that if an opposition or invalidity action is successful, the CTM or RCD will fail in all member states (in total 28, including Croatia).
An extended CTM or RCD can only be revoked or invalid on the basis of a ground that was valid before July 1, 2013 and not on grounds applicable only because of the accession of Croatia to the EU.
A national rights holder can prohibit the use of an extended CTM or RCD in Croatia if the holder has applied for these earlier rights before the date of the accession of Croatia and if they were acquired in good faith.
Our advice: If you believe your CTM or RCD application might be attacked by national right holders in Croatia, we recommend you to file your application before January 1 to avoid risking an opposition or invalidity action by a Croatian rights holder.
CTMs and RCDs filed on or after July 1, 2013
Applications filed on or after July 1, 2013 will cover all 28 jurisdictions and may be filed in Croatian. OHIM will by convention also translate the applications into Croatian.
Risk of conflicts – National rights / Extended CTMs and RCDs
It is important to note for national right holders in Croatia that an extended CTM or RCD can create a conflict with existing rights post-accession. To be able to identify potential conflicts, we advise you to monitor the CTM register.
Currently brand owners use EU Custom Notices as a protection against the cross-border trade in infringing goods. It has yet not been announced how Croatia’s accession to the EU will impact EU-wide Customs Notices, but it seems most likely that they will not automatically be extended to cover Croatia. We advise you to consider whether to include Croatia within your notice next year or, if you currently have a national notice in Croatia, whether to continue with that.
If you have questions or wish to discuss what implications Croatia’s accession to the EU could have for your IP rights, please contact any of our Trademark Attorneys.