Priority I. Current law

4.103 Rather than referring to the Paris Convention (and the WTO Agreement), Articles 29 to 31 CTMR contain a complete set of provisions on priority.

4.104 Article 29 CTMR mirrors Article 4 of the Paris Convention and extends the right to claim priority to applications originating in WTO Members. Articles 30 and 31 CTMR deal with procedure.

4.105 According to Article 32 CTMR a CTM application is deemed equivalent to a national trade mark application in all Member States. This provision has no direct link with priority claims but rather constitutes a further building block connecting the CTM system and national trade mark systems of the Member States.

4.106 Article 33 CTMR provides for so-called “exhibition” priority, implementing Article 11 of the Paris Convention.

4.107 The indications required when claiming priority are provided for in Rule 1 (1) (f) and (g) CTMIR. Specific implementing rules are found in Rules 6 and 7 CTMIR (Convention and exhibition priority). Examination of priority claims is carried out as part of the examination of formalities pursuant to Rule 9 CTMIR.

II. Case law

4.108 There is one notable decision of the General Court, dealing with the question whether the mark applied for as CTM was the same as the mark first filed. In that case the marks TELEEYE and TELEYE were held to be the “same” mark for purposes of claiming priority (Judgment of 15 November 2001, Case T-128/99, Signal Communications Ltd.).

III. Opinions

4.109 1. User organizations

Different views prevail among user organizations as to the question whether OHIM should embark on a full verification of priority claims. While some (COAPI, ECTA, GRUR) were in favour of verification, based on the argument that it is important for third parties to obtain clear and reliable information on the goods and services for which priority claims were correctly made, others (APRAM, AIM, MARQUES) do not perceive an urgent business need and therefore support OHIM’s current practice of recording claims without full verification.

4.110 2. User survey Allensbach

The question as to whether OHIM should carry out a full verification of priority claims at the time of registration formed part of the Allensbach survey. In contrast to all other questions addressing the possibility of changes in the current system, this was the only one which received a positive reply not only from a majority of proprietors (46 percent vs. 24 percent favouring the current system), but was also favoured by a majority of agents (52 percent vs. 38 percent). The answers from proprietors with a high level of OHIM activity, as well as those from large scale enterprises, were even more positive than the entire sample.

IV. Issues 1. Time limits

4.111 The time limit for claiming priority is six months (Article 29 (1) CTMR), in accordance with Article 4C (1) Paris Convention. Pursuant to Rules 6 and 7 CTMIR, where a priority claim has not been made at the time of filing, the CTM applicant may still claim priority, within a period of three months from filing. This additional period is rarely if ever utilized. When examination is carried out quickly, the application may already be published prior to the expiry of the additional three months, a situation not foreseen in the Rules.

4.112 Pursuant to Rules 6 and 7 CTMIR the applicant may file supporting documents within three months from the date of filing. This period also seems unnecessarily long.

2. Supporting documentation

4.113 The minimum formalities established in the Paris Convention are the so-called priority declaration (the claim) and information about the first filing (country, number of application). The Paris Convention allows its Member Countries to ask for subsequent compliance with additional formalities.

4.114 The CTMR and the CTMIR go beyond the minimum requirements and require the submission of a copy of the first application. That copy, if not in one of the five Office languages, must be translated into one of them.

4.115 It appears doubtful that these formal requirements are still appropriate today where much of the relevant information is easily available from the websites of the offices where the first application was filed. In any event, under Rule 6 (4) CTMIR the President of the Office may decide that less information than that required under Rule 6 (1) CTMIR suffices, but the filing of the copy of the first filing, established in Article 30 CTMR, is a requirement which the President of OHIM is hardly authorized to dispense with.

3. Degree of examination

4.116 Questions have been raised as to the examination of priority claims. Some advocate a full examination, whereas others advocate an examination limited to the formalities, especially for the presence of the necessary documentation.

V. Proposals 1. Time limits

4.117 It is proposed that the additional time limits in Rules 6 (2) and 7 (2) CTMIR, which lead to an undesired extension of the examination and may actually be an obstacle to quick examination and publication, should not be maintained.

4.118 It is further proposed that the time limit of three months provided for in Rules 6 (1) and 7 (1) CTMIR for submitting documentation for the priority claim should be reduced to two months.

2. Supporting documentation

4.119 It is proposed that the CTMR itself should not impose any formalities beyond the declaration of priority. Rather, the requirements as regards formalities and supporting documentation should be regulated by the Implementing Regulation.

4.120 The Rules should only impose easy to fulfil formal and documentation obligations.

As is currently the case, the President of the Office should have the power to reduce these requirements generally or with regard to specific countries.

4.121 The requirement that priority documents must always be in one of the languages of the Office does not appear necessary. Documents in any of the official European Union languages should be accepted. If the document is in a different

language, a translation into the language of the registration proceedings or into one of the Office languages should be filed.

3. Degree of examination

4.122 It appears appropriate that the Office limits its examination to the presence of the necessary documentation, which should become part of the file, and the necessary congruency between what is claimed and what is documented. Just recording certain information in the file does not, however, appear sufficient. A detailed examination, for example as to the identity of the goods or services, is not required.

4.123 The fact that preferences of users are clearly in favour of a more comprehensive examination, which is also endorsed by some user organizations, does not change this result. It is submitted that the high level of support is at least partly due to a general trend which can be seen throughout the Allensbach survey, namely that changes are welcomed which appear to provide more service. It is an open question whether the positive answers were given in full awareness of the consequences such changes would imply, in particular regarding time delays.

4.124 It should therefore be left to the President of the Office to determine the degree of examination. The current Rules would appear to leave sufficient room for such determination.

E. Searches