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Simon Gray, investigates how enlargement will affect your intellectual property rights.
A combined increase in population in Europe and opening of trade between Ireland and the new member states of the European Union (EU) will significantly influence a number of different areas of business management. From HR to cultural changes and market demands, there is no doubt that the coming years will be increasingly dynamic and interesting for Irish, and indeed, European businesses.
One of the many areas that managers will need to reassess as a result of EU enlargement is that of IP protection. In the immediate term those entrepreneurs who are particularly interested in trading in multiple countries of the EU, or in the new member states, should look at their trademark and design rights - as they currently stand, and those that will be required in the future.
The two primary developments in IP protection resulting from enlargement of the EU relate to Community Trademarks (CTM) and Registered Community Designs (RCD). As both names suggest, the CTM and RCD are forms of registration of trademarks and industrial designs throughout the European Community. Both application systems currently allow for IP owners to register their IP rights in all fifteen countries of the EU in one simple application. From May 1st 2004, both the CTM and RCD systems will be extended to offer companies the opportunity to register their IP rights, for trademarks and designs, in twenty-five countries with just one application and one application fee.
For companies trading, or planning to trade, in more than one country in the EU, this is an exciting development that will make it increasingly simple to obtain protection for IP across the European market, offering an efficient and cost effective way to register trademarks and designs.
In addition, one real benefit from enlargement is that from the May 1st 2004, existing CTMs and RCDs will be extended, granting protection for the respective trademark or design in each of the ten new countries.
However, owners of CTMs or RCDs are recommended to contact their trademark/design attorney to confirm the extension of their IP rights. In the event that a third party holds an existing national right in one of the ascension countries, for a mark/design which is identical or confusingly similar to that of the CTM/RCD, that party may be able to prevent the extension of your ownership rights into that country. This is of particular relevance to companies that intend trading in that country in future.
Brand/Design owners are also advised to note that while their CTM/RCD will be extended to give trademark protection in each of the new member states, ownership rights in the new countries will only be valid as and from May 1st 2004, and will not be backdated to the original date of the CTM/RCD.
However, as the process for registering IP rights in Europe simplifies, is also promises to make the market for IP increasingly competitive within the EU.
Unfortunately, while one aspect of obtaining brand protection in Europe will be made easier, there is a downside and the importance of carrying out a brand clearance search will become increasingly important. This is because a CTM registered by a small company trading in Slovenia, may be able to prevent a company from registering an identical or confusingly similar mark in Ireland. When launching a new brand onto the marketplace - be it nationally or internationally, it is recommended that you carry out a brand clearance search. This search will identify whether or not another party owns a mark that is identical, or confusingly similar to your proposed name, logo, design, or even colour, and is registered for use for the same goods/services as your own. In those instances where a third party has earlier rights to a mark, it may be possible for them to prevent a company from using their new mark.
Even if you intend trading only in Ireland with your brand, prior to launch it is necessary to ensure that the brand does not infringe any existing national or community trademark rights. From May 1st, with the CTM extending to ten new countries, this means that each new trademark is open to objection from brand owners trading in these ten countries - in addition to those trading in the existing countries of the European Union.
Similarly, if another company is seeking to register either a national mark or CTM, which you feel infringes your IP rights, you may be able to prevent them from proceeding to register that mark, and stop them from trading in the relevant markets while using that mark.
Enlargement of the EU will have different affects on every company. For some, those effects will be small while for others enlargement will have a substantial impact on their day-to-day operations. It is the role of management in each organisation to understand, anticipate and change in accordance with the affects of enlargement. In doing this, it is important not to neglect your Intellectual Property, as enlargement of the EU may have a significant impact on your ownership rights - either directly or indirectly.
Existing Countries in the EU
Ireland, United Kingdom, France, Germany, Spain, Portugal, Italy, Netherlands, Belgium, Luxembourg, Austria, Denmark, Finland, Sweden, Greece
Countries Entering the EU
Czech Republic, Estonia, Latvia, Lithuania, Malta, Cyprus, Hungary, Poland, Slovakia and Slovenia.
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