October, 2003
One-time Trademark Opportunity in European Union
Trademark owners should file applications in the EU before May 1, 2004 (and preferably before November 1, 2003)
The upcoming expansion of the use of the new mark in the owner’s own If you have questions about
European Union (“EU”) into Eastern Europe country, but the EU registration of the new registering your organization’s marks in the
will provide trademark owners who want to mark will remain in effect throughout the European Union or elsewhere abroad, please
protect their marks abroad with a unique, one- EU. contact your Lathrop & Gage attorney, or any
time opportunity: Any application filed of the attorneys listed below.
before May 1, 2004, that is not blocked by an For example, if your company files
an application to register in the EU for Al Hupp
existing mark or a defect under national law in
2345 Grand Boulevard, Suite 2800
one of the current EU countries 1 will auto- “Trademark A” prior to May 1, 2004, and
Kansas City, Missouri 64108
matically result in a registration in the entire there is already an application pending in (816) 292-2000
EU if the application is approved. Hungary, one of the new members, to ahupp@lathropgage.com
register a similar mark, the prior Hungarian
On May 1, 2004, ten new members – application will not automatically block Harry Wigner
Cypress, the Czech Republic, Estonia, your application for Trademark A. If your 10851 Mastin Boulevard, Suite 1000
Hungary, Latvia, Lithuania, Malta, Poland, application to register in the EU is filed Overland Park, Kansas 66210
Slovakia and Slovenia – will join the EU. The between November 1, 2003, and May 1, (913) 451-5100
2004, the owner of the Hungarian mark may hwigner@lathropgage.com
new registration’s effective status will extend
to the ten new members even if there is a prior oppose the registration of Trademark A in
Brent Baldwin
registration of an identical mark in one of the the EU. However, if the Hungarian owner 10 South Broadway, Suite 1300
new members or the new mark would ordi- loses or fails to file an opposition, he or she St. Louis, Missouri 63102
narily not be registrable because it was cannot later try to cancel the registration of (314) 613-2500
defective under national law of a new member. Trademark A in the EU; the most the owner bbaldwin@lathropgage.com
of the Hungarian mark will be able to do is
Ordinarily, if an application to stop use of Trademark A in Hungary only. David Shorr
register a new mark in the EU as a whole 314 East High Street
Another reason to file applications Jefferson City, Missouri 65101
encounters a prior registration of a similar
(573) 893-4336
mark in any individual EU country, the prior for registration in the EU before May 1,
dshorr@lathropgage.com
mark will block the EU registration of the new 2004, is financial. Although registration
mark. By the same token, if a new mark is not rights will expand from 15 countries to 25 Frank Evans
registrable in an individual EU country on that date, no additional fee will be 1845 South National
because of some inherent deficiency there, charged for applications already on file. Springfield, Missouri 65808
such as being a generic term for the goods or After the deadline, things may well be (417) 886-2000
services in that country’s language, that different. Although no decision has been fevans@lathropgage.com
national defect will also block EU registration. made by the EU, many European trademark
practitioners have speculated that, after Dan Cleveland
4845 Pearl East Circle, Suite 300
Until May 1, 2004, the owner of a May 1, 2004, the filing fee for applications
Boulder, Colorado 80301
new mark will face only limited risk from a to register in the EU may go from the (720) 931-3000
prior similar or identical mark in a new EU current 975 Euros to approximately 1700 dcleveland@lathropgage.com
member. First, if an application to register the Euros. The current official registration fee
new mark is filed between November 1, 2003, of 1100 Euros may also increase proportion- Paul Kalchbrenner
and May 1, 2004, the owner of the prior mark ately. 1200 G. Street, N.W., Suite 800
can oppose EU registration. However, if the 1
Present EU Member States are Washington, D.C. 20005
owner fails to oppose or the opposition is Austria, Belgium, Denmark, Finland, France, (202) 434-8982
Germany, Greece, Ireland, Italy, Luxembourg, the pkalchbrenner@lathropgage.com
unsuccessful, the owner cannot later try to
Netherlands, Portugal, Sweden, Spain, and the
cancel the EU registration of the new mark.
United Kingdom. For trademark purposes
Second, the owner of the prior mark can stop though, there are only 13 jurisdictions as Belgium,
the Netherlands and Luxembourg constitute a
single jurisdiction called Benelux.