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Friday, October 10, 2003

In the Official Journal of the European Union

L 236 Volume 46 23 September 2003 on page 33ff. the "Act concerning the conditions of accession of the Czech Republic, the Republic of Estonia, the Republic of Cyprus, the Republic of Latvia, the Republic of Lithuania, the Republic of Hungary, the Republic of Malta, the Republic of Poland, the Republic of Slovenia and the Slovak Republic and the adjustments to the Treaties on which the European Union is founded" has been published.

On pages

342 to 344 of the OJ, amendments to EU Industrial Property Law are indicated concerning the Community Trade Mark, Supplementary Protection Certificates as well as Community Designs.

With regard to the Community Trade Mark, a new Article 142a of the Regulation resolving conflicts caused by the EU extension is intended as follows:

Article 142a (inserted)
Provisions relating to the enlargement of the Community

1. As from the date of accession of the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia (hereinafter referred to as “new Member State(s)”), a Community trade mark registered or applied for pursuant to this Regulation before the date of accession shall be extended to the territory of those Member States in order to have equal effect throughout the Community.

2. The registration of a Community trade mark which is under application at the date of accession may not be refused on the basis of any of the absolute grounds for refusal listed in Article 7(1), if these grounds became applicable merely because of the accession of a new Member State.

3. Where an application for the registration of a Community trade mark has been filed during the six months prior to the date of accession, notice of opposition may be given pursuant to Article 42 where an earlier trade mark or another earlier right within the meaning of Article 8 was acquired in a new Member State prior to accession, provided that it was acquired in good faith and that the filing date or, where applicable, the priority date or the date of acquisition in the new Member State of the earlier trade mark or other earlier right precedes the filing date or, where applicable, the priority date of the Community trade mark applied for.

4. A Community trade mark as referred to in paragraph 1 may not be declared invalid: — pursuant to Article 51 if the grounds for invalidity became applicable merely because of the accession of a new Member State, — pursuant to Article 52(1) and (2) if the earlier national right was registered, applied for or acquired in a new Member State prior to the date of accession.

5. The use of a Community trade mark as referred to in paragraph 1 may be prohibited pursuant to Articles 106 and 107, if the earlier trade mark or other earlier right was registered, applied for or acquired in good faith in the new Member State prior to the date of accession of that State; or, where applicable, has a priority date prior to the date of accession of that State.’

With regard to the Community Design, a new Article 110a of the Regulation resolving conflicts caused by the EU extension is intended as follows:

Article 110a
Provisions relating to the enlargement of the Community

1. As from the date of accession of the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia (hereinafter referred to as “new Member State(s)”), a Community design protected or applied for pursuant to this Regulation before the date of accession shall be extended to the territory of those Member States in order to have equal effect throughout the Community.

2. The application for a registered Community design may not be refused on the basis of any of the grounds for non-registrability listed in Article 47(1), if these grounds became applicable merely because of the accession of a new Member State.

3. A Community design as referred to in paragraph 1 may not be declared invalid pursuant to Article 25(1) if the grounds for invalidity became applicable merely because of the accession of a new Member State.

4. The applicant or the holder of an earlier right in a new Member State may oppose the use of a Community design falling under Article 25(1)(d), (e) or (f) within the territory where the earlier right is protected. For the purpose of this provision, “earlier right” means a right acquired or applied for in good faith before accession.

5. Paragraphs 1, 3 and 4 above shall also apply to unregistered Community designs. Pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design.’

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