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Issue 123 | October 17, 2003
Benefits for Filing CTMs
Before November 1, 2003
 For European Community Trademark ("CTM") applications that are filed before November 1, 2003, the owner of an earlier, national trademark right in certain new member states will only be allowed to stop the use of the CTM in that member state. They will not be able to oppose or cancel the CTM registration based upon the prior, national right in the new member state.

The Czech Republic, Cyprus, Estonia, Hungary, Latvia, Lithuania, Malta, Poland, the Slovak Republic and Slovenia will become member states of the European Union on May 1, 2004, and will be joined by Bulgaria and Romania in 2007. Applications for CTM registrations which are filed before these dates of accession will include these new member states by automatic extension and will not be translated or published in the new languages.

With two exceptions, an earlier right existing in a new member state does not give its owner the right to oppose, cancel, or invalidate the automatically extended CTM. Article 107 of the CTM Regulation confers the right to prohibit the use of the CTM in the new territory according to the law of the new member state. Owners of these earlier rights in new member states can also oppose CTM applications which have been filed (or have a priority date) within six months prior to the date of accession. However, this latter right is limited only to oppositions and does not apply to cancellation actions. Therefore, if the owner of a prior national registration in a new member state fails to oppose a later, conflicting CTM filed before November 1, the owner of the prior national registration in the new member state will not have a right to cancel the CTM once it is registered.

Answers to "Frequently Asked Questions" on the legal implications of enlargement for the CTM system are available from the Office for Harmonization of the Internal Market at http://oami.eu.int/en/mark/marque/faq/faq11.htm. Share your suggestions on how to make the most of the CTM system by sending them to the author of this update, Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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