Seniority claims for trade marks in the EU

Where the proprietor of a trade mark registered in a European Union member state has an application, or registration for an EU wide trade mark, for an identical mark and overlapping goods, they can claim ‘seniority’ in respect of the EU trade mark. This means that they can backdate their EU trade mark rights to the date of their national registration, in that country. By doing this, the trade mark proprietor then has the option of allowing the member state registration to lapse, thereby reducing the administrative burden associated with maintaining multiple registrations and also generating significant costs-savings by not having to pay multiple renewal fees.

 

Despite the apparent advantages in allowing national registrations to expire, the decision to do this should always be taken after getting professional advice, because there may be circumstances where, even if a seniority claim has been made, it is in the interests of the proprietor to maintain registration in a member state. For example, this might be the case where a member state has allowed the proprietor to register wider rights than those conferred by the EU trade mark, or where the trade mark is subject to challenge, or objection, or where the member state might leave the EU.

 

What is the process?

A seniority claim can be made at the time of filing the EU trade mark application, or within two months following filing, or alternatively at any time after the EU trade mark has been registered. Documents in support of the claim must be submitted within three months of the claim being made. The proprietor is not required to file a copy of the earlier national registration(s) if the relevant information is available online; however, if it is not available online then the EU Trade Mark Office will request a copy of the national registration and any other evidence it requires.

 

What does the EU Trade Mark Office check?

The EU Trade Mark Office will ensure that the marks in the EU trade mark, and in the national registration, are the same and that all required formalities have been complied with. Seniority can only be claimed from an earlier registration, not from an earlier application. It can also only be claimed if the earlier registered national mark is still valid; if the national registration has already been allowed to lapse or has been declared invalid or otherwise revoked, then no claim will be possible.

 

How can Page White & Farrer help?

Here at Page White & Farrer we understand that budgets may be tight when launching a new brand and it is important to prioritise investments, including for your intellectual property protection. We take a holistic approach to looking at a company’s strategy over the long term and where possible will identify practical steps to help you ensure that your budget is directed wisely and most cost-efficiently. The use of seniority claims in the registration of trade marks is just one of several ways in which we can help you build the value in your brand.

 

For more advice on any aspects of trade mark or brand protection in the UK, Europe and internationally, please contact James Cornish, European and chartered trade mark attorney, on 44 (0) 207 831 7929 or email james.cornish@pagewhite.com.

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis and answer any questions you receive from others about Brexit. Please note that the law may have changed since the date this was first published in December 2016.