Community Trademarks and Seniority Claims
Seniority claims as reasonable way to concentrate trademark portfolios but they also contain some uncertainties and risks.
I. Claiming Seniority
It is possible to maintain earlier trademark rights without the necessity to extend the (several) earlier national trademark registrations. It is possible to file and register a CTM and maintain the earlier date of filing of the national trademark but only for the territory of this respective national trademark. This means an earlier priority date of a German trademark of 1978 and a French trademark of 1965 does not mean that the CTM has a priority date of 1965 but that in Germany the CTM has a seniority date of 1978 and in France it has a seniority date of 1965. Thus, it is also possible that a CTM trademark has different seniorities for different Member States, all based on earlier national registrations.
For claiming the seniority, formal and substantive requirements have to be fulfilled:
1. Formal Requirements
There are three formal requirements to claim seniority for the CTM.
There has to be a valid earlier registered national trademark; the relevant date is either the application date or the priority date.
The request of claiming seniority has to contain the following complete information: earlier registered national trademark, country and owner of the earlier trademark, application and registration date, list of goods and services of the earlier trademark.
Claiming seniority is possible either already together with CTM application (filing date + within 2 months after) or after the CTM trademark has been registered. However, if the national trademark has been expired, it is not possible to claim for seniority of this national trademark anymore. Therefore, it is important to make sure that the national trademark does not expire before filing the request of seniority. Otherwise it is not possible to claim seniority for the CTM.
2. Substantive Requirements
There are several important substantive requirements which also have to be observed to successfully claim seniority for the CTM mark.
The so-called Triple Identity Rule has to be kept in mind carefully. If this Rule is not fulfilled, the claim of seniority will be automatically rejected. It is therefore highly important to make sure that the applied for or registered CTM mark and the earlier national trademark in the European Community are registered for identical owners, identical trademarks and identical goods and services. The Triple Identity Rule has to be fulfilled at the filing date of the CTM or for a registered CTM at the filing date for claiming seniority.
Please be aware of the following most common problems with regard to the identity of the owners, trademarks and list of goods and services:
Identical owner means that the natural person or legal entity has to be identical: Thus, differences in address or company name are irrelevant as long as the legal entity is still the same. However, it is not sufficient if the owners of the CTM and the national trademark are linked; e.g. parent-subsidiary relationship or membership in the same company. If the earlier trademark is registered for multiple owners, the CTM has to be registered or applied for the identical multiple owners.
Identical trademark means that the trademark has to be identical in its appearance regarding the word elements as well as the figurative elements. Any other colour or additional figurative elements will prohibit the successful claim of seniority. Even the typography usually has to be identical, because a special font might be hold as being characterizing and therefore as being dissimilar to a common font. However, if there are used (different) standard fonts for both signs, they usually should be seen as identical. However, to be sure, it is highly recommended to use the same font for both trademarks.
Identical goods and services are required to receive seniority for the CTM. If the registered goods or services of the CTM and the earlier trademark differ, seniority will be granted only for those goods and services which are identical to the list of the earlier national trademark. If the earlier trademark is only used for some of the registered goods and services (after the expiration of the grace period of non-use), the seniority will be dropped for those goods and services for which the national Office declared that those are cancelled because of non-use.
II. Examination of Seniority
The seniority has different favourable effects but there are also some dangers which have to be kept in mind.
1. The effects of seniority in the CTM system
If the owner of an earlier national trademark loses its national mark (after claiming and confirming seniority), he shall deem to continue to have the same rights as he would have had if the national trademark had continued to be registered, see Art. 34 (2) CTMR. These effects occur only if the earlier national trademark expires or is deleted. If seniority is claimed but the national trademark is still in force, there is no place for an active seniority of the CTM. As long as the earlier trademark is still active there is no possibility to assert the rights based on seniority of the CTM but only based on the priority date of the national trademark.
The claimed seniority is limited to the territory of the earlier national trademark only. It does not apply for all Member States of the CTM and cannot be extended so far. Seniority grants no additional rights but only those which the trademark owner is entitled to because of the former national trademark. However, there are some additional benefits:
No necessity to extend the national trademark which saves costs.
For third parties it is obvious from the register extract that the trademark owner owns trademark rights older than the application date of the CTM.
If the grace period of non-use of the earlier national registration is not expired yet, the CTM starts with a new five years grace period of non-use for the identical goods and services in the whole territorial scope of protection, namely the European Union. The rights of the CTM trademark, based on the seniority claim of the national trademark, persist, if the trademark is used respectively in the other Member States. An earlier national trademark which is not used, but not deleted yet due to non-use, should be voluntarily cancelled as soon as the seniority is claimed and the CTM is registered to maintain the grace period of non-use for up to another five years.
If the CTM has to be transformed into national trademark applications (e.g. because the CTM is not used sufficiently in its territorial scope), the “new” national trademark has the identical rights as the “old” national trademark from which seniority was claimed (to the extent the rights were continued because of the seniority claim with the CTM), see Art. 108 (3) CTMR.
2. Loss of Seniority
Any mistake regarding the Triple Identity Rule at the relevant claiming date (CTM filing date or claiming seniority filing date, depending whether claiming with CTM application or after registration) leads to the consequence that no seniority is granted.
Any changes which destroy the Triple Identity Rule before the seniority claim takes effect also destroy the seniority automatically; e.g. change of ownership only of the national or CTM registration. The alteration of goods or services of the CTM or the national trademark leads to a partial or total loss of seniority, too.
3. Pitfalls and Dangers
Although there are several advantages of the seniority claim, there are also some pitfalls and dangers which have to be take into consideration.
The earlier national registration may not be withdrawn before the registration of the CTM if seniority is claimed with CTM application. Otherwise, the seniority will be lost.
The earlier national registration may not be withdrawn before the acceptance of the seniority claim by Office if seniority has been claimed after CTM registration. Otherwise, the seniority will be lost, too.
The earlier national trademark has to be valid at time of registration of CTM or acceptance of seniority claim. If the national trademark lapses before that time, the seniority claim will be lost.
If the earlier trademark is deleted because of non-use, the seniority claim based on this trademark is lost, too. However, a voluntary deletion because of abandonment or non-renewal has no influence on seniority claim. Thus, if there is a risk of cancellation because of non-use in the near future, the national trademark should be deleted by its owner before any respective formal decision.