New EU Member States can now oppose EU trade mark registrations

The Office for Harmonisation in the Internal Market (OHIM) administers the EU Community Trade Mark registration system, whereby an applicant need only register his trade mark once in order to be able to enforce it throughout the EU. OHIM has been taking steps to ready itself for the increase in workload once the EU enlargement process takes place.

The ten new Member States - Cyprus, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovakia and Slovenia – will not become official members of the EU until 1st May next year, but have been granted transitional rights in respect of the Community Trade Mark.

This means that since 1st November trade mark holders within these new Member States have been able to oppose the granting of an application for a Community Trade Mark where they have pre-existing trade marks under their own national laws. This earlier right must have been acquired in good faith.

The opposition may be lodged with OHIM within three months of the publication of the application, but cannot be filed in respect of applications made before 1st November.

Protection has been given to rights holders who have a pre-existing national trade mark, but could not oppose the granting of a Community Trade Mark because the application was made before the transitional period. In this situation the Community Trade Mark cannot be enforced within that new Member State, although it will extend throughout the rest of the EU.