Seniority I. Current law

4.72 Current law provides, in Articles 34 and 35 CTMR, for the possibility to claim

“seniority” (the relevant date; filing date or priority date), when filing a CTM or after registration of an identical registered national mark, provided that the marks are the same, the proprietor is the same, and the goods or services for which the national mark is registered are the same or are included in the CTM application or registration (“triple identity”). Seniority has the effect that in case the national mark is not renewed or surrendered or otherwise loses its effect the proprietor of the CTM will have the same rights as regards the national mark as if that mark had continued to be registered. Implementing rules are found in Rules 8 CTMIR for claiming seniority prior to registration and in Rule 28 CTMIR for claiming seniority after registration.

4.73 Article 14 TMD provides that national laws must allow challenges to no longer registered marks the effect of which persists because they form the basis for a seniority claim for identical CTMs.

II. Practices of national offices and opinions 1. National offices

4.74 Time limits for keeping the files of trade marks which form the basis of seniority claims under Articles 34 and 35 CTMR are different in various national offices:

- Until the lapse of validity of the national trade mark (Cyprus);

- two years from the lapse of validity of the national trade mark – at the office;

permanently – at the State archive (Lithuania);

- three years from the lapse of validity of the national trade mark (Benelux);

- five years from the lapse of validity of the national trade mark (paper files), permanently (electronic files) (Slovakia);

- 50 years from the lapse of validity of the national trade mark (Czech Republic);

- until the lapse of validity of the CTM (Hungary, Spain);

- permanently: Austria, Denmark, Greece, Ireland, Italy, Latvia, Malta (in the archives), Poland, Portugal, Slovenia, Sweden.

- Replies by Benelux, Bulgarian, Estonia, Finnish, French and Romanian offices indicate that currently no legal provisions concerning the time limit for keeping seniority files are established.

2. User organizations

4.75 According to user organizations seniority claims of a national trademark should continue to exist, but some (e.g. ECTA) see the necessity of revision and development of the system and its modalities in order to avoid legal uncertainties.

3. User survey Allensbach

4.76 The option for claiming seniority is used by a majority of agents (64 percent), but only by 39 percent of CTM proprietors. One quarter of the proprietors were not aware of this possibility before. Familiarity with, and use of seniority claims is strongly impacted by activity levels; 72 percent of highly active proprietors respond that they do claim seniority.

4.77 The Allensbach survey also included the question as to whether seniority claims should be fully checked in the future. Of the CTM proprietors, 32 percent were in favour of a full verification while 32 percent were in favour of leaving the current practice unchanged. Among the agents 37 percent supported a change to a full verification whereas 44 percent were in favour of the current approach.

III. Issues

4.78 For marks first applied for in a Member Country of the Paris Convention or the World Trade Organization and thereafter as a CTM the priority claim in accordance with Article 29 CTMR is available when seeking protection for an identical CTM. The priority claim is however severely limited as it must be made within six months of the first filing.

4.79 CTM proprietors or applicants often hold identical national marks in the EU Member States. Their effect is however limited to the country where they are

protected. Seniority was supposed to provide an expedient vehicle for assembling identical national marks under the umbrella of a CTM, without the need to maintain national registrations.

4.80 The expectations connected with seniority have only partially been fulfilled. The number of seniority claims remains modest. The effect of a seniority claim is dependent on a surrender or non-renewal of the national mark, something many proprietors are unwilling to do.

4.81 OHIM has been inconsistent in its approach to examining seniority claims.

4.82 National laws implementing Article 14 TMD have chosen differing solutions. There is practically no experience with challenges of no longer registered national marks which provide the basis for a seniority claim. Also, there is still uncertainty about how national offices will preserve information about previously registered national marks which are no longer kept alive by their proprietors.

IV. Proposals 1. Substantive law

a) Approximation of priority and seniority

4.83 A person claiming “seniority” – i.e. the filing date or priority date, if any – of a registered national mark which is identical with a CTM applied for or registered by the same person who is the proprietor of the national mark should, once the seniority claim is accepted, be entitled to claim, with respect to that Member State, the seniority date (i.e. the filing date or priority date) of the national mark. The seniority claim is “partial” when the CTM is applied for or registered for goods or services in addition to those for which the earlier mark is registered. When the earlier national mark contains more goods or services than the CTM, the seniority claim would still be for all the goods or services found in the CTM.

4.84 Under current law the seniority effect becomes operative only upon surrender or non-renewal. This forces CTM proprietors to surrender their national marks or abstain from renewing them, even if that may not be in their interest. It is proposed to provide that the effect should apply regardless of whether or not the national mark is maintained or surrendered. This effect would, because of the nature of the earlier registration invoked, naturally be limited to the Member State where the earlier national mark exists or existed.

4.85 Under current law, the seniority effect is lost if the national mark is declared to be revoked or to be invalid, or if it is surrendered prior to the registration date. This should be maintained as far as invalidation is concerned, as the effect of invalidation is that the national mark is deemed not to have existed ab initio. As regards revocation, the effect should only be lost if the revocation is effective from a date prior to the filing or priority date of the CTM. There is no reason to provide for the loss of the effect if the national mark is surrendered or not renewed after the CTM filing or priority date but before registration.

4.86 The consequence for the CTM system would be that oppositions or cancellation requests from proprietors of national marks or other earlier national rights existing in the Member State in respect of which seniority was claimed, and who have acquired rights later than the relevant date of the national mark the seniority of which was claimed, even though earlier than the subsequent CTM application, would not be considered as “earlier” and thus would not prevail over the CTM.

4.87 The consequence for the national systems would be that the CTM having claimed the seniority of an identical national mark would be treated in the country (system) where the earlier mark exists or existed as an earlier right from the date of the national mark, and not from the actual filing (or priority) date of the CTM. In all other Member States, the CTM would be an earlier right as of its filing or priority date.

b) “Triple identity”

4.88 The “triple identity” requirement (same mark, same goods/services, same proprietor) should continue to apply.

c) Consequential amendments

4.89 Amendments would be necessary for Articles 8 (2), (4), and 53 CTMR as regards the definition of “earlier” rights, and of Article 34 CTMR as regards the effects of a seniority claim. Article 35 CTMR would not have to be amended, as it refers to Article 34 (2) and (3) CTMR for the effects of the seniority claim.

4.90 The TMD contains a definition of “earlier rights” in Article 4 (2) which includes CTMs claiming seniority, whether or not the earlier national mark is still registered.

An amendment of the Directive is therefore not necessary in this regard.

d) Challenging marks providing the basis for a seniority claim

4.91 It is proposed to amend Article 14 TMD to provide that after surrender or non-renewal a national mark providing the basis for a seniority claim shall not be subject to “ex post” invalidation or revocation unless it could have been invalidated or revoked at the time of cancellation from the register and at the time of the decision on invalidation or revocation. The primary effect of this proposal would be that a national mark that provides the basis for a seniority claim and that is no longer registered cannot be challenged on grounds of non-use unless it could have been so challenged at the time of removal from the national register. Even if it could have been challenged then, the challenge is no longer available if the mark is thereafter used in the Member State in question.

e) Preambles of Regulation and Directive

4.92 The Preambles of the Regulation and the Directive should also be amended.

2. Procedure

a) Rules 1, 8 and 28 CTMIR

4.93 The details relating to seniority claims are provided for in Rules 1, 8, and 28 CTMIR. Rule 1 CTMIR provides what the applicant has to indicate and supply. It is proposed that the period after the filing of the application provided for in Rule 8 (2) CTMIR for claiming seniority should not be maintained. In view of the ability to claim seniority after registration (Article 35 CTMR) there is no need to maintain this additional period. A consequential amendment should be made in Rule 9 CTMIR.

4.94 As regards other procedural requirements, no changes are proposed. Notably, the Office should include a proper document originating from the office of origin showing the details of the mark the seniority of which was claimed. That document should be accessible through file inspection. This obligation should apply until such time as a common seniority documents data base is established.

4.95 The current rules (Rules 8 (4) and 28 (4) CTMIR) allow the President of OHIM to determine that the applicant or registrant does not have to provide the Office with certified copies of the earlier registration. The President has made use of this possibility because the Office has access to national databases and can therefore copy the appropriate information into the OHIM file. No change is proposed.

b) Examination of seniority claims

4.96 OHIM should be required to examine seniority claims with regard to formalities and the identity of marks as well as to the identity of the proprietor. An examination of the identity of goods or services does not appear necessary. It will be for the proprietor of a CTM with an identical national mark to establish the extent to which the goods or services are identical at the time when the earlier national mark becomes subject matter of an opposition, cancellation or infringement procedure.

A change in the applicable rules is not necessary. Where the seniority claim is partial in the sense that the CTM contains more goods or services than those in the earlier national mark, this should be indicated in the register. Rule 84 (2) (j) and (3) (f) CTMIR provide a sufficient basis for this.

4.97 In addition or as an alternative to the examination of seniority claims, OHIM should be authorized to submit seniority claims to the national office of origin for examination.

c) Documents, database

4.98 OHIM should be required to maintain as part of the CTM file the documents filed by the CTM proprietor, or obtained by OHIM on its own initiative, showing the national mark and all relevant details. Once the national mark is surrendered or otherwise loses its effect, e.g. through non-renewal, the relevant documents showing this should also become part of the CTM file kept by OHIM, provided either by the CTM proprietor or by the national office.

4.99 OHIM should agree with all national offices to create a database containing all the necessary information about national marks which form the basis of a seniority claim, at least with regard to those national marks which are no longer registered.

3. Fees

4.100 In view of the substantial benefits resulting from a seniority claim and the work to be done, on the parts of both OHIM and the national offices, it is proposed that claiming seniority should be subject to a separate fee, to be paid for each national mark forming the basis of a seniority claim.

4.101 It is proposed that the fee should be set at a level sufficient to cover the work of OHIM. It is further proposed that the fee should also cover the work of national offices and the potential loss of fee income in case the national mark is not maintained but continues its effects. For this purpose, OHIM should pay a share of the fee to the national office.

4.102 The basis for the fee should be provided for in Articles 34 and 35 CTMR, the amount should be set in the Fees Regulation. An alternative would be to provide for the fee in Article 162 CTMR. Rule 4 CTMIR, providing for the fees to be paid with the application, would have to be amended as well.

D. Priority