EUTM Seniority

Once an European Union Trade Mark (EUTM)¹ is filed it can be used to consolidate existing national registrations in EU member states. 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. While the immediate financial effect of saved renewal fees for the national registration(s) is obvious, the details of the effects of a Seniority claim, in particular with regard to pending proceedings, are quite complex. Therefore, the question of whether or not national registrations shall be allowed to lapse should be carefully gauged on a case by case basis.

^{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?

Seniority has the sole effect under the EUTM Regulation that, where the proprietor of the EU trade mark surrenders the earlier national trademark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered.

The financial advantage is obvious: the renewal fees for the national registration(s) can be saved and only the renewal fees for the EUTM have to be paid. 

It should be noted, however, that the non-renewal of a national registration leads to the loss of the national trade mark right. The proprietor can then only invoke the EUTM registration in enforcement proceedings. If the EUTM registration is successfully challenged and cancelled for some reason, there is the possibility to convert the EUTM registration into national registrations. For EU member states in which national registrations existed for which Seniority was claimed, the original priority date of these national registrations can be claimed for the converted EUTM. This “revives” the original national registration. However, this process involves additional costs in connection with the conversion request at EUIPO as well as the procedure before the national office.

Furthermore, practical effects of Seniority claims in the context of ongoing proceedings are quite complex as well. The question of whether or not national registrations shall be allowed to lapse and “replaced” by Seniority claims should be carefully gauged on a case by case basis, especially if the mark is question is used for enforcement purposes.

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).

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 generally be maintained.
• If the national registration is the basis of an International Registration it should be maintained for the duration of the dependency period.
• 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. In this case it may be recommendable to maintain the national registration. 
• 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.

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.