European Union: Effect of Enlargement of the European Union on Trademark Rights

Originally published December 2006

On January 1, 2007, the European Union¹ will be enlarged to add Bulgaria and Romania as member states. Those who already own European Union applications or registrations will immediately enjoy trademark protection with the automatic extension of rights into Bulgaria and Romania and the grandfathering of earlier rights.

Listed below are important points for European Union trademark owners to consider:

• All marks registered or applied for before January 1, 2007 in the European Union will automatically be extended to the new member states of Bulgaria and Romania.

• Owners of national trademark registrations in Bulgaria and Romania will not be entitled to use their national rights to bring invalidity proceedings against European Union trademarks filed prior to January 1, 2007.

• The European Union Trademark Office ("EU Office") will not be able to raise substantive objections to applications filed in the EU Office prior to January 1, 2007 on the grounds that a mark is generic, descriptive, customary, or deceptive in the languages of the two new member states.

• European Union trademark applications filed after July 1, 2006 may be subject to opposition based on earlier rights in Bulgaria or Romania.

• European Union trademark owners, including those who have filed applications in the EU Office prior to January 1, 2007, may claim seniority from both national registered trademarks in Bulgaria and Romania and international marks protected in those countries.

Individuals and companies that do not currently own European Union trademark applications or registrations for existing or proposed marks should review their trademark coverage before January 1, 2007 to consider taking advantage of the automatic extension to the proposed new member states of Bulgaria and Romania.