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Case Study Developing Trade Mark Strategy

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method for developing trade mark in croatia
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   www.iprhelpdesk.eu   September 2017 Company details   Name: Anonymous SME Software applications 1.   Background A Croatian SME dealing with facility management, interior design and software development for related services has been present in the market since 2010. With a small team of three employees, the company has managed to position itself as a reliable provider of high level and efficient software services for their clients. Their presence in the domestic market is solid with a potential for growth in international markets. 2.   Problem faced The company had been active in the Croatian market with its own (unregistered) trade mark long before having started to look for opportunities abroad. After taking the decision of going international, the company then sought advice 1  on the possible steps to be followed in terms of IP protection when expanding the business to international markets. It was then that the company knocked on the European IPR Helpdesk Ambassador ’s 2  door in Croatia to get support on IP issues. 1  To learn more about the steps to follow in order to obtain IP protection when going international, please check the European IPR Helpdesk fact sheet “Intellectual property relevance in internationalisation”   here.  2  Click here to see the team of European IPR Helpdesk Ambassadors to find the contact in your country. European IPR Helpdesk Case Study   Developing a trade mark strategy when going international  2   The European IPR Helpdesk  The European IPR Helpdesk ’s  Ambassador helped the company to identify the products and services in relation to which the trade mark was being used as well as the classes according to the Nice Classification 3 , being a necessary step in completing a trade mark application. The next step consisted of conducting a trade mark search 4  based on the identified goods and services. At this stage, an issue arose: the results showed that although the Croatian SME’s trade mark  was available in Croatia, it was already registered as a European Union trade mark (EUTM, previously known as Community Trade Mark) for the same/similar products and services by a large electrical appliance manufacturer. Indeed, the problem was more complex than it seemed because at that time Croatia was six months away from becoming a European Union Member State, when all the European Union trade marks, including this large manufacturer’s trade mark , would become valid in Croatia. According to the EUTM Regulations, when a new country joins the EU, the EUTMs automatically extend to that country and the third parties’ rights in the  accession country –  in this case Croatia - that pre-date the accession date are maintained and can be held against the use of the EUTMs in that country but cannot be relied upon to invalidate the EUTMs 5 . This could have turned out to be a critical issue for the Croatian SME if they continued to use their trade mark without a registration, as it could become an infringer once the large company’s trade mark bec ame valid in Croatia after its accession to the EU. 3.   Possible actions and the outcome The SME had three possible options to follow: (1)   Finding another trade mark in order to avoid a potential infringement. However, this could mean new investments both in time and money, which might not be easy for an SME. (2)   Taking no steps regarding the registration while continuing to use the unregistered trade mark. However, this could make the SME an infringer, when the large company enters the Croatian market. In addition, the SME would need to prove earlier rights without having a registered right (e.g. on the grounds of genuine use, etc.) to challenge the large company’s trade mark, which might create a huge financial burden. 3  The Nice Classification is an international system of classifying goods and services for registration of trade marks. The current version consists of 45 classes with more than 10,000 goods and services. 4  Please check the European IPR Helpdesk fact sheet on “How to search for trade marks” available  here for more information on trade mark searches. 5  Article 165 of the EUTM Regulations  3   The European IPR Helpdesk  (3)   Filing a trade mark application as soon as possible. This would allow both trade marks to co-exist in the Croatian market. Besides, this would make it easier to eventually claim earlier rights in order to stop the large company from using its trade mark in Croatia. After having discussed the matter with the European IPR Helpdesk Ambassador and having received specialised support from IP professionals 6 , the Croatian SME decided to follow the registration route at least to co-exist with the large company in the Croatian market and to have a registered right in order to strengthen the SME ’  s possible future prior rights claims. For the other EU countries, since this trade mark has already been registered by the large company, the SME has decided to develop and register 7  a different trade mark for the EU market in order not to face any further conflicts with the large company. 4.   Lessons learned and suggestions Getting the right information at the right time is of the utmost importance to all SMEs working in the open market. Considering all alternatives and taking all measures in a timely manner help companies to identify potential threats and opportunities, especially in taking a decision regarding international expansion. Once again, this case study shows that before taking any further steps in marketing and brand communication, conducting a trade mark search (together with other IP searches) with professional help is always suggested. Prior to this search, the goods and services in relation to which the trade mark is to be used as well as the target markets should be identified. For this reason, it is essential to develop an IP strategy integrated with the company’s business strategy. It should also be kept in mind that IP is an indispensable element for businesses. Following the right steps can lead to market leadership while failing to do so may cause irremediable consequences. Therefore, understanding the significance of IP at an early stage is key for sustainable success. 6  The European IPR Helpdesk has published a guide on  “ 10 steps to find a suitable IP professional ”   to provide support on how to find an IP professional that matches your needs. 7  For practical information regarding international registration of trade marks, check our IPR Charts on  “ EU Trade Marks ”   and  “”I nternational Trade Marks (Madrid System) ”     4   The European IPR Helpdesk  GET IN TOUCH   For comments, suggestions or further information, please contact European IPR Helpdesk c/o infeurope S.A. 62, rue Charles Martel L-2134, Luxembourg Email: service@iprhelpdesk.eu  Phone: +352 25 22 33 - 333 Fax: +352 25 22 33 –  334 ABOUT THE EUROPEAN IPR HELPDESK The European IPR Helpdesk aims at raising awareness of Intellectual Property (IP) and Intellectual Property Rights (IPR) by providing information, direct advice and training on IP and IPR matters to current and potential participants of EU funded projects. In addition, the European IPR Helpdesk provides IP support to EU SMEs negotiating or concluding transnational partnership agreements, especially through the Enterprise Europe Network. All services provided are free of charge. Helpline: The Helpline service answers your IP queries within three working days. Please contact us via registration on our website –  www.iprhelpdesk.eu  –  phone or fax. Website:  On our website you can find extensive information and helpful documents on different aspects of IPR and IP management, especially with regard to specific IP questions in the context of EU funded programmes. Newsletter and Bulletin:  Keep track of the latest news on IP and read expert articles and case studies by subscribing to our email newsletter and Bulletin. Training: We have designed a training catalogue consisting of nine different modules. If you are interested in planning a session with us, simply send us an email at training@iprhelpdesk.eu.  DISCLAIMER The European IPR Helpdesk project receives funding from the European Union’s Horizon 2020 research and innovation programme under Grant Agreement No 641474. It is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises (EASME), with policy guidance provided by the European Commission’s Internal Market, Industry, Entrepreneurship  and SMEs Directorate-General. Even though this Case Study has been developed with the financial support of the EU, its content is not and shall not be considered as the official position of the EASME or the European Commission. Neither EASME nor the European Commission nor any person acting on behalf of EASME or of the European Commission is responsible for the use which might be made of this content. Although the European IPR Helpdesk endeavours to deliver a high-level service, no guarantee can be given on the correctness or completeness of the content of this Case Study and the European IPR Helpdesk consortium members are not responsible and may not be held accountable for any use which might be made of this content. The support provided by the European IPR Helpdesk should not be considered as of a legal or advisory nature. © European Union (2017) ©istockphoto.com/Dave White
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