A European Union Trade Mark (EUTM)1 is sometimes filed to consolidate existing EU national registrations. Details of the national rights can be recorded on the EUTM register in the form of seniority claims, so that the owner of the EUTM benefits from the earlier national rights even if the national registrations are allowed to lapse. We consider that the corresponding EU national registrations should be maintained for at least five years after the grant of an EUTM registration, even when seniority is claimed.
1 previously known as a Community Trade Mark (EUTM)
What is a seniority claim?
A seniority claim is a system whereby the owner of an EUTM application/registration, or an EU designation of an International Registration, can claim the prior rights of existing national registrations in the European Union (or national designations of International Registrations), even if the national registrations are allowed to lapse. Please note however:
- Seniority can be claimed only for goods/services in the national registration that are also in the EUTM;
- The mark in the EUTM and the national registration must be identical;
- The EUTM and the national registration must be in the same ownership; ownership by a related company is not sufficient;
- The national registration must not have lapsed at the time that seniority is claimed;
- The seniority claim will be lost if the earlier trade mark is declared invalid or if it is revoked with effect prior to the filing date or priority date of the EUTM.
How is it claimed?
Details of the national registrations are submitted to the EUIPO2 (or via the World Intellectual Property Organization for International Registrations). Usually the EUIPO will itself check the data from the websites of the national trade mark offices, but sometimes they will request supporting documentation.
| 2 previously known as OHIM |
When can seniority be claimed?
Seniority can be claimed on, or up to 2 months after, filing an EUTM application or at the time of filing an EU designation, or else after the registration of an EUTM or grant of protection of an EU designation.
Although there are costs in claiming seniority, it is usually desirable to claim seniority on filing the application, particularly if the prior rights are significant, as this may act as a deterrent to those who might have contemplated opposing the application had they not been made aware of the prior rights.
What is the value of a seniority claim?
The utilisation of seniority, as opposed to the claim to seniority, is a matter for national law, rather than EUTM legislation. As far as we are aware, seniority claims have never been challenged in the Courts, therefore there is a degree of uncertainty surrounding them.
An EUTM registration or EU designation may claim seniority from various national registrations, which subsequently can be allowed to lapse, once the EUTM registration is registered or protection is granted for an EU designation. The EUTM legislation says that, if the EUTM itself is successfully attacked by a third party, the EUTM registration can be converted into national applications, retaining the relevant seniorities, and so keeping in effect the national dates. However, conversion applications are governed by national law. The validity of such seniority claims is therefore not particularly clear, and may well have to await the decision of the national Courts.
Another factor is that the EUIPO accepts seniority claims with only a very brief formalities examination; the acceptance of the seniority claim is therefore no guarantee that it will be found valid if it subsequently has to be relied upon.
Why is it recommended that national registrations be maintained for at least five years after the grant of an EUTM?
If there is an owner of a similar EUTM or national trade mark which is earlier than your EUTM registration/EU designation, that owner knows of your use of the later EUTM registration, but for five years fails to take action against it on the basis of their earlier trade mark, then they are held to have lost the opportunity to object, unless your later EUTM was applied for in bad faith.
Thus, provided that your EUTM is being extensively used, it will be difficult for third parties to take action against it after five years. So once an EUTM has been registered for at least five years, seniority will have less importance for a well-used mark.
Why claim seniority?
- Recording seniority claims and allowing the corresponding national registrations to lapse is likely to be more cost effective than paying the renewal fees for the national registrations.
- It may also make it easier to manage a large portfolio of trade marks than trying to keep track of a large number of national registrations.
- It may prevent some oppositions and cancellation actions (see “When can seniority be claimed?” above).
- Seniority may be required in opposition and similar proceedings, in order to defeat a trade mark which has a date earlier than the EUTM, but later than the corresponding relevant national right. This is especially the case if national registrations are allowed to lapse quite soon after the grant of the EUTM.
- It may give additional weight to the registration, acting as a deterrent to third parties who might not otherwise be aware of the earlier rights in national EU member states.
Should national registrations be maintained?
The decision to allow a national registration to lapse should be made carefully. Among the points to consider are:
- Is the mark very important, for example a house mark? If so, it would be sensible to maintain the national registrations alongside the EUTM.
- Is a particular national registration the basis of an ongoing action e.g. an opposition or infringement action? If so, the registration should be maintained.
- Does the national registration contain goods/services which are of importance which are not in the EUTM? The specification of the EUTM may perhaps have been restricted or narrowed down, for example because of opposition or threat of opposition on the basis of third party rights. Those rights may have been in some but not all of the EU countries.
- In the United Kingdom and Ireland it is possible to include slight variants of a mark in one registration as a “series” of marks. Are all the variants important, and are they all covered by EUTMs, or should the national UK and/or Irish registrations be maintained?
- Trade mark protection in some countries is obtained by re-registering UK trade mark registrations there. It may not always be possible to obtain protection by re-registering EUTMs. Even where possible, this may result in the loss of prior rights.
- The geographical coverage of national registrations may be greater. For example, a Danish national trade mark registration covers Greenland and the Faroe Islands; an EUTM does not.
- Are there contractual obligations attached to the national registrations? For example have they been licensed or used as security for a loan?
- Use of a mark in just one EU country may not be sufficient to maintain an EUTM registration if challenged. Therefore if the mark is only in use in one EU country, it may be wise to retain national rights (although they may also be vulnerable to non-use cancellation).
- Similarly, it is arguable whether a reputation in just one EU Member State is enough to give the whole EUTM a reputation. If it is not, then maintaining the national registrations where the mark has a reputation will be important.
- A national registration that forms the basis of a seniority claim can be invalidated or revoked even after it has lapsed, with the effect that the seniority claim is lost. Rights acquired through a seniority claim that are vulnerable to non-use cancellation cannot be saved from revocation if use recommences at a later date in the same way that national registrations can. Therefore, if there is doubt about whether the national registration is vulnerable to non-use cancellation, it should not be allowed to lapse.
- An EUTM currently covers the UK, however, if and when the UK leaves the EU ("Brexit") this will no longer be the case. It is expected that the process of conversion of the UK parts of EUTMs into UK national trade marks will also acknowledge valid seniority claims. However, some trade mark owners may prefer to maintain their UK registrations for added reassurance, even where seniority is claimed.
Please get in touch with your usual contact at Mewburn Ellis LLP for further information and advice.
This information is simplified and must not be taken as a definitive statement of the law or practice.