3 August 2010

Trade Mark Priority – Question Referred by Spanish Tribunal Supremo Court to European Court of Justice

Trade Mark Priority – Question Referred by Spanish Tribunal Supremo Court to European Court of Justice

Does the early bird catch the worm?

An answer is eagerly awaited from the European Court of Justice in response to a question from the Tribunal Supremo court in Spain, with regard to what constitutes an earlier right where two applications (one being a Community trade mark and one being a national trade mark) are filed on the same day.

The question seeks an answer to whether Article 27 of the Community Trade Mark Regulation regarding the filing of a Community trade mark application should take account of not only the day of filing, but also the hour and/or minute the application is filed at OHIM where a National application has also been filed on the same day as the Community trade mark and where the National legislation takes the actual time of filing into account when assessing whether a trade mark is an “earlier” right.

This is an interesting question as in some jurisdictions, such as the UK, trade marks filed on the same day are allowed to coexist on the Register with neither one being given priority over the other. If the Court rules that the hour and minute of filing can lead to a claim of priority, it could mean that an application filed just one minute before another will be considered to be an earlier right which takes precedence over the later mark, and which could be used to prevent the later mark from proceeding to registration.