IP Cases & Commentary – Details
25 March 2010
Claiming Seniority in a Community Trade Mark (CTM)
Seniority should not be confused with priority.
When claiming seniority, the owner of an earlier trade mark which has been registered in any Member State of the European Union can claim seniority from that earlier mark in the subsequent Community Trade Mark where there is triple identity, that is to say, where the later Community Trade Mark is filed in the same name as the earlier trade mark is registered in a Member State, the trade marks are identical and the Community Trade Mark is sought to be protected for goods or services which are identical with, or contained within, the specification of the earlier trade mark.
The implications are that the seniority claim which is the subject of the earlier mark will continue to have effect where the proprietor of the Community Trade Mark either voluntarily surrenders the earlier trade mark in the Member State or allows it to lapse. The proprietor will then continue to have the same rights as he would have had if the earlier trade mark had continued to be registered.
The seniority claimed in a Community Trade Mark will lapse only if the earlier trade mark is revoked on the grounds of non-use, or is declared to be invalid, or if it is surrendered prior to the registration of the Community Trade Mark.
Seniority can be claimed within two months of the filing of a Community Trade Mark application or alternatively, it can be claimed once the Community Trade Mark application has proceeded to registration.
In addition to seniority claimed in a Community Trade Mark from an earlier mark registered in a Member State, where an International Registration designating the European Community has been lodged, seniority of an earlier trade mark registered in any Member State may also be claimed in the International application in respect of the European Community designation. This can be claimed either when lodging the International Registration designating the European Community is filed at the International Bureau in Geneva or at any time after the publication of the application to designate the European Community by the Community Office (the OHIM). In the latter circumstances, the Office will notify the International Bureau in Geneva accordingly.
A benefit of claiming seniority in a later Community Trade Mark is that third parties become aware that the Community Trade Mark owner may have earlier rights in a Member State which could be brought into play if the application or subsequent registration were to be challenged.
Another benefit of claiming seniority in a Community Trade Mark is that the national right can be lapsed on next renewal, thus saving the renewal fees, but the earlier right will live on in the Community Trade Mark.
There has been some reluctance to relinquish such earlier national rights, however, as there has been no case law, to date, where a seniority claim has been challenged in the Courts and until such time as attorneys see the way in which the Courts would interpret the law, they have been reluctant to suggest that earlier national rights should be dropped.
However, on 1 April 2010, the Community Trade Mark system will be 14 years old and it is now time to put some trust in the provisions for protecting seniority in a later Community Trade Mark and to allow earlier national rights to lapse.