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Braving The New World
17 May 2004 Simon Gray
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Braving The New World
Irish Marketing Journal, May 2004.
Simon Gray, assesses the impact that recent EU enlargement will have on brand owners
Enlargement of the European Union is expected to open a large number of commercial doors for European companies. A seismic increase in EU population and the opening up of trade links between new and existing member states, will ensure that the potential for business development is substantial. Irish based companies are not excluded to this and those exporting into the European Union may soon find the increased consumer base of a potential 100 million people very attractive indeed.
But as the European consumer base grows and trade between EU countries becomes easier, how will Irish brand owners be affected? The main issue to arise from enlargement in relation to brand protection relates to trademarks, or rather the relationship between the two different forms of trademark registration in Europe - the single country registration of a trademark known as a national right, and the broader Community Trademark, which protects across frontiers. The CTM is a system that ensures that ownership of a brand is registered in each of the current member states of the EU in a single application. From the May 1st 2004, existing CTMs will be extended, granting trademark protection in each of the ten new countries.
Rights Under Threat
However, owners of CTMs who have anticipated this extension of their trademark protection are advised to speak with their trademark attorney to confirm the status of their ownership rights. In the event that a third party holds an existing national trademark right in one of the ascension countries, for a mark which is identical or confusingly similar to that of the CTM, 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.
Registering Your Rights
In addition to the extension of existing CTM rights from May 1st, enlargement of the European Union also means that it will now be possible to obtain brand protection in twenty-five countries, in one application. Until May 1st 2004, obtaining protection in four of the member states, plus two of the new ascension countries will involve a minimum of three applications (one CTM and two national registrations) and a maximum of six applications (six national applications). The facility to use one application to register your trademark in 25 countries is a significant development for brand owners, providing a much more economical method of registering brand ownership throughout Europe.
Brand owners are also advised to note that while their CTM 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.
Getting Brand Clearance
Unfortunately, while one aspect of obtaining brand protection in Europe will be made easier, there is a downside. When launching a new brand onto the marketplace - be it nationally or internationally, it is important to carry out a brand clearance search. This search will identify whether or not another party owns a name, logo, design, or even colour. 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 a brand owner will be trading only in Ireland, and does not intend to trade outside Ireland with that brand, prior to launch it is necessary to ensure that the brand does not infringe any existing national or community trademark rights. This means that, from May 1st, with the CTM extending to ten new countries, 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.
As Your Attorney I Advise You...
As different brands require different levels of protection, it is difficult to detail the exact impact that enlargement will have for individual brand owners. It is hoped, however, that the above information will succeed in acting as a brief outline of the possible impact that enlargement will have on brands in Europe. None the less, it is advisable that all brand owners to speak with their trademark attorney and review their existing and future ownership rights and requirements, and ensure that they have adequate brand protection both before and after enlargement of the European Union.
Existing Countries in the EU (in case of unexpected memory lapse).
Ireland, United Kingdom, France, Germany, Spain, Portugal, Italy, Netherlands, Belgium, Luxembourg, Austria, Denmark, Finland, Sweden, Greece
Countries Entering the EU (in case of unexpected invitation to pub quiz).
Czech Republic, Estonia, Latvia, Lithuania, Malta, Cyprus, Hungary, Poland, Slovakia and Slovenia.
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