Croatia joins the EU – what does this mean for Community Trade Marks?

Flag_of_Croatia_svg

Flag of Croatia

On the 1st July 2013 Croatia will become the 28th Member state of the EU. So what does this mean for existing, pending and future Community Trade Marks?

For Community Trade Marks registered before 1st July 2013:

  • Immediate extension of the existing protection to Croatia, without any formality or additional cost as from 1st July 2013.
  • Your trade mark cannot be challenged because of this accession neither on absolute grounds nor on relative grounds. For example, your trade mark, even if descriptive in the Croatian language, will still be valid. Similarly, a prior similar Croatian trade mark cannot serve as basis to obtain nullity of your mark.
  • But the use in Croatia of your trade mark, even if registered before 1st July 2013, could be prohibited by the owner of an earlier national Croatian right, provided this latter was acquired prior to 1st July 2013 in good faith.

In simple terms, this means that an existing Community Trade Mark (CTM) registered prior to 1st July 2013 will be enforceable in the entire EU territory, including Croatia – but not against an earlier conflicting national Croatian registered trade mark.

You do not need to do anything to extend the protection, as it will be automatically extended to include Croatia, however, if you wish to use your trade mark in Croatia, you should search the Croatian register in order to find any earlier national mark that might prevent the use of your mark in this Croatia.

For Community Trade Mark applications filed before 1st July 2013:

  • Your trade mark will be examined as previously even if the examination process is still pending after 1st July 2013, meaning that absolute grounds deriving from the accession of Croatia will not be taken into account.
  • The holder of an earlier Croatian national mark acquired prior to 1st July 2013 could oppose your community application only if your application has been filed after 1st January 2013 (exceptional opposition rights).

This means that a Community Trade Mark application can only be challenged in Croatia if it has been filed between 1st January 2013 and 1st July 2013 and is similar to a prior Croatian trade mark.

For national Croatian Trade Marks filed prior to 1st July 2013:

  • You will be able to prevent the use in Croatia of a registered Community Trade Mark for a similar mark and to oppose a pending application for a CTM filed after 1st January 2013.
  • As from 1st July 2013, if you own a Croatian and a Community registration for the same mark covering the same goods and services, you will be entitled to claim seniority of your earlier national mark, meaning that you may then refrain from renewing your national registration.

You should search the Community Trade Mark register to look for possible problems with existing Community Trade Mark registrations and determine if a reaction is necessary.

If you have any questions please contact Jerry Walder.

Is it possible to protect early-stage creative output? A new IP collaboration aims to find a way…

On 22nd April 2013 Sanderson & Co attended the inaugural meeting of the IP Innovation Fund at the British Library in London.

brain_cogs_smallWe are proud to be one of 30 UK IP law firms who have now united behind IP Innovation Fund to focus on early-stage entry into the IP system for creators of all types.  The launch of the IPIF has been led by Creative Barcode and Innovation Bank in response to the UK IP Review, Hargreaves recommendations, and the (Richard) Hooper Stage 1 report.   The aim of the IPIF is to discuss, develop and work toward ways of helping creators, of all types, to enter the intellectual property system at an earlier stage than they currently do.

“In the digital age the IP issues have become far more confused and complex where most internet users do not understand the difference between free to access, free to view and that of free or paid or permission based download and use of copyright works published online” commented Maxine Horn, CEO, Creative Barcode.

Protection of concepts and safe disclosure

It is essential that creators feel confident that they can have safe conversations with third parties at the beginning of the design process. Of particular interest is how early-stage concepts are protected allowing them to develop further and potentially lead to patent applications, registered designs or copyright registration and the commercialisation of that IP.

Caroline Ward from Sanderson & Co says, “We look forward to seeing the progress that is made by the IPIF, but it is vitally important to consider whether it is possible to obtain IP protection, and, if so, to apply for such protection before you disclose a concept; a public disclosure of your concept could prevent you from obtaining protection.”

For advice about IP protection please contact Caroline Ward.

For further information about the IP Innovation Fund please contact Maxine J Horn, CEO Creative Barcode. m.j.horn@creativebarcode.com

Will Patent Box stimulate British innovation?

When the UK government proposed the introduction of the Patent Box scheme in 2009 their aim was twofold:  to encourage British companies to invest in innovation to stimulate the economy and strengthen manufacturing industry, and to make it more attractive for international companies to base their R&D in the UK.   With the Patent Box scheme now up and running will it achieve its goals?

What is Patent Box?

Essentially Patent Box allows companies to apply a lower rate of Corporation Tax to profits earned from their patents.   The relief is being phased in from April 2013 with the full benefit of 10% Corporation Tax being available from April 2017.

To qualify for Patent Box a company must have been involved with the development of the patent and must own or exclusively license them.

Qualifying patents

All granted UK and European patents qualify for Patent Box regardless of when they were granted, as well as patents from the following countries in the European Economic Area: Austria, Estonia, Hungary, Romania, Bulgaria, Finland, Poland, Slovakia, Czech Republic, Germany, Portugal, Sweden, Denmark

Qualifying income

To qualify, income can arise from a number of sources including:

  • Selling patented products
  • Licensing out patent rights
  • Selling patented rights
  • Income arising from infringement of your patent rights – e.g. damages awarded
  • Income from use of a patented manufacturing process
  • Income from provision of a service reliant on a patented tool

You cannot qualify for Patent Box on the basis of a patent application but once the patent has been granted you can claim for profits that have been generated up to 6 years prior to grant.  However, only profits arising after April 2013 will qualify.

Will it work?

For the large multinational companies that generate large profits from a range of patented innovations it is a significant step by the government to encourage them to employ the highly skilled staff required for R&D in this country.  The pharmaceutical giant GSK is investing £500 million in its UK manufacturing network and will create around 1,000 jobs directly in response to the Patent Box system.

“When implemented, the patent box has the potential to transform the way in which the UK is viewed by companies such as GSK as a location for new investments in high added-value R&D and manufacturing,” commented GSK chief executive Andrew Witty in an article in Pharmafile .

For smaller SME companies, less experienced in making sure they are taking full advantage of their IP, it will be a little harder to get to grips with.   Although some question whether a 10% rate of tax is sufficiently small to encourage businesses, the relatively small investment in patenting your innovations can potentially reap large rewards in the longer term.

As with all IP, a granted Patent is an asset for the company and tax breaks associated with it can only be beneficial.

“Having a granted Patent is a prerequisite for anyone wishing to take advantage of the Patent Box scheme.  However, potential users of the scheme need to bear in mind that a patent application must be filed before any public disclosure of the invention takes place.  You cannot wait until you are sure you have a commercially successful product before deciding to patent it, in order to get the Patent Box tax breaks.  So, SMEs will need to be pro-active in determining at an early stage in product development process, which inventions to patent.” – Jerry Walder, Partner at Sandersons.

For advice or more information about whether the Patent Box could help you contact Sanderson & Co

See also:

http://www.ipo.gov.uk/types/patent/p-patentbox.htm

http://www.hmrc.gov.uk/ct/forms-rates/claims/patent-box.htm