Impact of EU enlargement on trademark protection

The accession of certain West Balkan states to the European Union is expected to take place within the next few years. Although the states involved are relatively small in terms of territory and population, their strategic and economic weight is likely to increase as a result of accession (as was the case for the Czech Republic and Slovakia).

The following countries are candidates for entry into the European Union: Albania, Bosnia and Herzegovina, Croatia, Macedonia, Montenegro and Serbia. Iceland may also be added to this list; while it is the smallest country in terms of population, it may well prove to be the first of the group to accede to the European Union.

The enlargement of the European Union will raise new problems for the trademark protection system, particularly in connection with Community trademarks. Community trademark registrations will automatically become effective in the new member states. However, in order to safeguard third parties' existing trademark rights in such states, the following provisions shall apply:

• Bona fide owners of trademark registrations in the new member states may prevent use of conflicting Community trademarks within such states.
• Bona fide owners of trademark registrations in the new member states may oppose conflicting Community trademark applications filed within a six-month period before the date of accession.

There is a risk that third parties may be tempted to profit from these provisions by filing, before accession occurs, applications in countries hoping to become members of the European Union seeking the registration of trademarks identical or confusingly similar to Community trademarks.

Under these circumstances, if trademarks are not yet adequately protected in the potential member states by either a national or an international registration, the relevant parties should undertake the necessary steps for their protection for all the goods or services of interest.