trademark a by legalstuff


									   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            
                                                   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      
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      
                                                   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,
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       
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        
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
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.

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