Consequences of Croatia’s Accession to the EU for National and Community Trademarks
→ Dina Vlahov
Trademark right is a form of monopoly; it guarantees its proprietor exclusive rights on market. With Croatia’s accession to the EU on 1 July 2013, the advantages of an open market unfolded, which resulted also in easier trademark protection on both the national and European market via Community trademarks.
Croatia’s Trademark Law
In the necessity of harmonising its intellectual property law area with acquis communautaire, Croatia had already made considerable modifications during its pre-accession negotiations period in the area of trademark protection by enacting the Trademark Law to provide the same level of trademark protection as the other member states. Consequently, provisions on national trademarks, in the mere moment of Croatia’s accession to the EU, remained identical to those implemented in the Trademark Law. However, the biggest change introduced with accession to the EU, which also influenced the provisions related to national trademarks, was brought by implementation of the Community trademark, particularly in the sense of earlier trademark, priority, and seniority.
Community trademark effects on national trademarks
Extension of Community trademark effects
Effects of Community trademark applications filed and Community trademarks registered before Croatia’s accession to the EU are automatically extended to the Croatian territory. Moreover, protection of all Community trademarks after 1 July 2013 includes Croatia as well. No new applications or additional fees are required, and the Office for Harmonisation for the Internal Market (OHIM) does not have to issue any new special acts in this respect. Such extension is unilateral, meaning that the effects of registered trademarks in Croatia as the new member state are not also extended to the territories of the earlier member states.
Besides directly at OHIM or via the Madrid System, a Community trademark application can henceforth be filed via the State Intellectual Property Office of Croatia.
Community trademark as an earlier trademark
Community trademark applications and registered Community trademarks are deemed as earlier trademarks in respect of national trademark applications filed and/or national trademarks registered after Croatia’s accession to the EU, unless the national trademark has a filing or priority date earlier than the filing or priority date of the Community trademark application.
Conversion of a Community trademark
The applicant for or a proprietor of a Community trademark may request the conversion of its Community trademark application or Community trademark into a national trade mark application: (i) to the extent that the Community trademark application is refused, withdrawn, or deemed to be withdrawn; and (ii) to the extent that the Community trademark ceases to have effect. A national trademark application that derives from such conversion has a filing date or a priority date of the national trademark application in an underlying member state.
Aegis of national trademark
Prohibition of use of Community trademark
The use of a Community trademark the effect of which is extended to the Croatian territory can be prohibited if it conflicts with the use of a national trademark acquired before Croatia’s accession to the EU or with one acquired on the grounds of a national application filed before Croatia’s accession to the EU. The proprietor of a national trademark may request prohibition of the use of the Community trademark in Croatia via a civil action but must prove that the Community trademark conflicts with his registered national trademark.
Right of priority
Considering that Croatia is a member of the Paris Convention and the Agreement establishing the World Trade Organisation, a person who has duly filed an application for a national trademark in Croatia enjoys – for the purpose of filing a Community trademark application for the same trademark in respect of goods or services that are identical with or contained within those for which the application has been filed in Croatia – a right of a priority for six months from filing the first application.
Seniority of national trademark can be claimed in respect of a Community trademark: (i) if a national trademark is registered before Croatia’s accession to the EU and (ii) if a national trademark has priority over the Community trademark for which seniority is claimed.
Seniority can be claimed for an earlier national trademark only if the Community trademark and national trademark: (i) have an identical proprietor; (ii) concern an identical trademark; and (iii) have goods or services identical with or contained within those for which the earlier trademark has been registered.
The legal effect of the seniority rule is mainly continuation of the existence of an earlier trademark where the proprietor surrenders the earlier trademark or allows it to lapse, whereas he may then continue to have the same rights as he would have had if the earlier trademark had continued to be registered.