On July 1st, 2013 Croatia becomes the 28th Member State of the European Union.
The owners of Community trademarks see the immediate extension of their rights to Croatia, without the need to file any application and without any formality or additional costs
We can take into consideration two different situations: the owner of a Community trademark already registered (namely granted before the date of July 1st, 2013) and the owner of a Community trademark application.
Article 165, 4) of the Council Regulation No. 207/2009 on Community trademark (“Provisions relating to the enlargement of the Community”) states that Community Trademark may not be declared invalid neither for absolute grounds nor for relative grounds whether such grounds are applicable merely because of the accession of a new Member State.
The above means that the Community trademark may not be declared invalid neither for absolute grounds (for example, should it consists of a word which is descriptive in the Croatian language) nor for relative grounds (existence of an earlier identical or similar Croatian trademark).
Pursuant to Article 165, 5) of the Council Regulation No. 207/2009, however, the use of the Community trademark in Croatia “may be prohibited … if the earlier trademark or other earlier right was registered, applied for or acquired in good faith in the new Member State prior to the date of the accession of that State…”.
With regard to the Community trademark application, Article 165, 2) of the Council Regulation No. 207/2009 states that: “The registration of a Community trademark which is under application at the date of accession may not be refused on the basis of any of the absolute grounds for refusal …is these grounds became applicable merely because of the accession of a new Member State”. So, also in this case, a Community trademark application shall not be refused because, for example, descriptive of the goods designated in the Croatian language.
However, according to Article 165, 3) “Where an application for the registration of a Community trademark has been filed during six months prior to the date of accession, notice of opposition may be given …where an earlier trademark or another earlier right …was acquired in a new Member State prior to accession, provided that it was acquired in good faith and that the filing date …precedes the filing date…of the Community trademark applied for”
This means that only Community trademark applications filed from January 1st, 2013 going on are challengeable if identical or similar to a prior Croatian trademark or right acquired in good faith.