Rules concerning examination
The basic rule of enlargement is that all existing CTM applications and registered CTMs are automatically extended to the new MS without any kind of additional intervention by the OHIM, other bodies or the holders of rights. This ensures that these rights have equal effect throughout the EU and complies with the fundamental principle of the unitary character of the CTM.
Applications pending on the accession date may not be refused on the basis of an absolute ground which becomes applicable due to accession. In other words, if an application is non-distinctive, descriptive, generic, deceptive or contrary to public policy or morality in the language or the territory of a new MS, it will not be refused if its filing date is before the State’s accession date. For applications filed after the accession date, absolute grounds for refusal apply normally. This is the case even when priority predates accession, since priority does not protect the applicant from changes in law.
Rules concerning opposition and cancellation
The general rule regarding opposition and cancellation is that a CTM application cannot be opposed or declared invalid on the basis of an earlier national right in a new MS prior to that MS’s accession date (Article 165(4)(b)CTMR). That is not the case for CTM applications filed after the accession date which may be rejected or invalidated, provided that the earlier national right existing in a new MS is ‘earlier’ when the two filing or priority dates are compared.
Article 165(3) introduces an exception to this rule, according to which a CTM application, filed within the six months preceding the accession date, may be challenged by an opposition based on a national right existing in a new MS, provided that this right has an earlier filing or priority date and was acquired in good faith. The filing date and not the priority date is decisive here. The exception is limited to opposition and does not apply for cancellation based on relative grounds for refusal.
Source: OHIM
