Businesses were alerted to the urgent need to review their IP strategies ahead of EU enlargement next year to take advantage of the favourable transitional rules for Community Trade Marks and Designs.
The warning came at an international seminar in London organised jointly by law firm Holman Fenwick & Willan and the Singapore Business Group. Kate Szell, a trade marks expert with Lloyd Wise, and Philip Wareham, a commercial partner at Holman Fenwick & Willan urged companies that, although the date for enlargement is 1 May 2004, the time to act was now. Every business reliant on brands has an interest in maximising the protection available at law and that includes those involved in consumer goods through to shipping, aviation and petroleum.
For Community Trade Marks and Designs already registered, the enlarged Community will mean enlarged rights: all current Community Trade Marks and Designs will automatically extend to ten new countries . Existing owners of national marks and designs in the new accession states will only be able to prevent the use of conflicting Community Trade Marks or Designs filed pre-May 2004 in their state.
For new registrations of Community Trade Marks or Designs, time is of the essence. For a Community Trade Mark, unless the application is filed before 1 November 2003, an owner of a similar national trade mark in a new state, say Cyprus, will be able to oppose registration during the application procedure. From 1 May 2004, things will get even tougher and more expensive for Community-wide applications: owners of national trade marks will be able to attack applications both before and after registration. For Community Designs, owners of registered designs in new states will be able to challenge registrations after 1 May 2004, but cannot oppose before registration.
Kate Szell reminded the audience that the new Community Design right, available since 1 April 2003, offers a cheap and quick alternative to trade mark registration for company logos as the law now protects the design itself and not merely its physical application.
Further details about how to apply for a Community Trade Mark or Design can be obtained from Philip Wareham on 020 7264 8403 or at philip.wareham@hfw.co.uk
