On 1 July 2013, Croatia became the 28th country to join the European Union. This had the effect of automatically extending the scope of the Community Trade Mark (CTM) and Community Design (CD) regimes to Croatia.

Where a national Croatian trade mark was acquired in good faith prior to 1 July 2013, it can be used to oppose the use of an equivalent or similar CTM within Croatia. It cannot, however, be used to invalidate the CTM insofar as it applies to the remainder of the EU. Also, no CTM can be invalidated on absolute grounds which arise as a result of Croatia’s accession to the EU.

There are exceptional opposition rights however that will be of interest to holders of CTMs. Where a CTM application was made between 1 January 2013 and 30 June 2013, the holders of an earlier national Croatian trade mark can challenge the CTM application if it can be shown that the Croatian national right was acquired in good faith and that its application predated the application for the CTM. Only CTMs filed between those dates and which are similar to prior Croatian marks are vulnerable under this exceptional procedure.

The extension of rights in respect of countries joining the EU is one of the key benefits of registering a CTM as opposed to registering individual national trade marks.

Contributed by: David Cullen & Leo Moore