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 firstname.lastname@example.org 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 email@example.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 firstname.lastname@example.org 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, email@example.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 firstname.lastname@example.org 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 email@example.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 firstname.lastname@example.org 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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