European Union Enlargement and the Effect on Intellectual Property
January 22, 2003
A number of important intellectual property issues arise out of the enlargement of the European Union (EU). The candidate countries for enlargement are Bulgaria, Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Romania, Slovak Republic, Slovenia and Turkey. Negotiations with all of these countries, except from Turkey, closed on 4 October 2002.
Following the decision of the Copenhagen Summit on 13 December 2002, Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, Slovak Republic and Slovenia can join the EU on 1 May 2004. Bulgaria and Romania will join in 2007. There is no date as yet by which Turkey is expected to join, if ever.
Details are as follows:
|
European Union Countries |
|||
|
Member States of the European Patent Convention |
Member States of the Community Trade Mark |
Member State Population (US Census Bureau, data as at 10 October 2002) |
|
|
Austria |
Yes |
Yes |
8.2 million |
|
Belgium |
Yes |
Yes |
10.3 million |
|
Denmark |
Yes |
Yes |
5.4 million |
|
Finland |
Yes |
Yes |
5.2 million |
|
France |
Yes |
Yes |
60.0 million |
|
Germany |
Yes |
Yes |
82.4 million |
|
Greece |
Yes |
Yes |
10.6 million |
|
Italy |
Yes |
Yes |
57.9 million |
|
Luxembourg |
Yes |
Yes |
0.5 million |
|
Netherlands |
Yes |
Yes |
16.0 million |
|
Portugal |
Yes |
Yes |
10.0 million |
|
Republic of Ireland |
Yes |
Yes |
3.9 million |
|
Spain |
Yes |
Yes |
40.2 million |
|
Sweden |
Yes |
Yes |
8.9 million |
|
UK |
Yes |
Yes |
60.0 million |
|
Non-EU, EEA Countries |
|||
|
Member States of the European Patent Convention |
Member States of the Community Trade Mark |
Member State Population (US Census Bureau, data as at 10 October 2002) |
|
|
Iceland |
No |
No |
279,384 |
|
Liechtenstein |
Yes |
No |
32,842 |
|
Enlargement Countries (1/5/2004) |
|||
|
Member States of the European Patent Convention |
Member States of the Community Trade Mark |
Member State Population (US Census Bureau, data as at 10 October 2002) |
|
|
Czech Republic |
Yes (July 2002) |
Automatic (May 2004) |
10.3 million |
|
Estonia |
Yes (July 2002) |
Automatic (May 2004) |
1.4 million |
|
Hungary |
Yes (January 2003) |
Automatic (May 2004) |
10.0 million |
|
Latvia |
(2003) |
Automatic (May 2004) |
2.4 million |
|
Lithuania |
(2003) |
Automatic (May 2004) |
3.6 million |
|
Malta |
No |
Automatic (May 2004) |
0.4 million |
|
Poland |
(2003) |
Automatic (May 2004) |
38.6 million |
|
Slovak Republic |
Yes |
Automatic (May 2004) |
5.4 million |
|
Slovenia |
Yes (December 2002) |
Automatic (May 2004) |
1.9 million |
|
Non-EU Countries |
|||
|
Member States of the European Patent Convention |
Member States of the Community Trade Mark |
Member State Population (US Census Bureau, data as at 10 October 2002) |
|
|
Bulgaria (will join 2007) |
Yes |
Automatic (2007) |
7.6 million |
|
Former Yugoslav Republic of Macedonia |
Yes |
No |
2.1 million |
|
Romania (will join 2007) |
Yes |
Automatic (2007) |
22.3 million |
|
Switzerland |
Yes |
No |
7.3 million |
|
Turkey |
Yes |
No |
67.3 million |
|
Monaco |
Yes |
No |
31,987 |
Community Exhaustion of Intellectual Property Rights
When a patented product is placed on the market in the European Economic Area (EEA) the proprietor’s patent rights become exhausted, for example, the patent, trade mark or other IP right cannot be enforced to prevent parallel imports into other EEA countries. This is known as community exhaustion. Patent proprietors may have problems enforcing their patents if their patented products are imported into a candidate country such as Malta where they have no patent protection. Under the doctrine of community exhaustion, once their goods are in such a country they can enter the rest of the EEA market with impunity. Malta and Cyprus have traditionally been trans-shipment centres for parallel imports entering the EEA.
Patents
As far as the European Patent Convention (EPC) is concerned, all EU enlargement states will be member states of the EPC by 1 May 2004 except Malta. Clients who wish to enforce patents throughout the EU should file a separate patent in Malta in conjunction with their European patent application. (Malta is not part of the Patent Co-operation Treaty.) The cost of filing a patent in Malta is 50 Maltese Lira (125 US dollars) and can be conducted in English. This may be a wise practice in view of community exhaustion.
Currently, a European patent application may be extended to Slovenia, Lithuania, Latvia, Albania, Romania and former Yugoslav Republic of Macedonia by paying 102 euro (105 US dollars) for each state. A European patent application is filed at the EPO but is granted as a bunch of national patents which must be enforced through national courts. It would be good practice for all European patent applicants to pay the relatively small cost of extending the application to these states so when Slovenia, Lithuania, Latvia and Romania become part of the EU, patentees will be able to enforce their rights with greater effect.
Community Patent
The European Commission proposed the creation of a community patent in a Green Paper in 1997. There is no timetable at the moment for its implementation because member states are still debating the official languages, role of the National Patent Offices and whether there should be a centralised court for hearing community patent cases. The community patent is likely to supersede and replace all national patent systems in the EU, although all systems (national, European and community) will initially coexist. The proposed mechanism for implementing the community patent is to declare the European Community (EC) as a member state of the European Patent Office (EPO), and let the EPO deliver these community patents in the form of European patents valid only in the EC. (Of course, these can also be filed simultaneously for other non-EC states which are members of the EPO.)
Community Trade Mark Registration System
Those who already own applications or registrations will automatically obtain protection in the candidate countries when they join the EU. Those who do not face the additional hurdle of possible third-party opposition to any Community Trade Mark (CTM) are applications filed after accession by the candidate countries.
There are several important ramifications for the CTM:
- All CTMs registered or applied for before the new states’ accession to the EU will automatically be extended to the territory of the new member state, according to the principle of acquis communautaire; this is subject to transitional provisions;
- There will be no forms, fees or translations required in order to extend existing applications or registrations;
- The principle will also apply to applications filed after the date of enlargement but having a priority date earlier than the date of enlargement;
- "Earlier rights" as defined in Article 8 of Council Regulation 40/94/EEC do not confer on the proprietor the right to oppose any automatically extending pending CTM application or to apply for invalidation of any automatically extended registration;
- Proprietors of these earlier rights are permitted to oppose CTM applications with a priority date not greater than six months prior to the accession date provided that the opposition period has not expired and the earlier right has not been acquired in bad faith;
- Enforcement of CTMs will be possible in the new member states from the date of enlargement;
- Seniority and conversion mechanisms will have to be in place in the new Member States prior to accession.
Bad faith is clearly seen as a priority issue. Office of Harmonisation in the Internal Market (OHIM) appears to view the candidate countries as countries where blocking registrations will be sought by parties trying to prevent identical or confusingly similar registrations to those registered in other member states with a view to preventing market access, extorting money or profiting from the reputation of another party’s trade mark. OHIM and the national trade mark offices are, therefore, promoting the legal remedies available before OHIM and before the national trade mark offices.
It is advisable for any parties not currently owning CTM applications or registrations for key existing or for proposed marks to review their trade mark coverage before enlargement in order to take advantage of the automatic extension to the proposed new member states. The recommendation to all individuals and companies trading in the EU is that they should ensure that they do not miss out on the opportunity to obtain trade mark registration protection.
