Seniority

Question 1

When was the EUTM introduced?

Answer 1

1 April 1996

Before that - if you wanted to protect a TM in the EU member states then you had to file in them individually (one exception - Benelux)

Question 2

What is seniority?

Answer 2

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 identical existing national registrations within EU member states (or national designations of international registrations)

A successful claim extends EUTM rights in a specific country claimed back to the date of earlier national registration

Question 3

What are the benefits of claiming seniority?

Answer 3

1. No need to incur separate renewal costs for individual countries. Once a seniority claim has been made the national registrations can be allowed to lapse.
2. Removes burden of use in national territories (use of a TM in a handful of countries in an EUTM normally sufficient to maintain TM)
3. No need to record separate title changes
4. If claimed when filing the EUTM may discourage third parties, puts them on notice that you have prior rights

Question 4

What is the difference between seniority and priority?

Answer 4

Seniority - rights are backdated to that of the national registration in that national territory. Any member state of the EU.

Priority - rights are backdated to the first filing (6 months of filing date). Any member state of the Paris Convention.

Question 5

What are the requirements for seniority?

Answer 5

1. Need to have an earlier, national registration - this can also be a designation of an EU member state in an International Registration
2. Earlier right must be in force - cannot be expired or in grace period
3. TRIPLE IDENTITY requirement
   - identical owner
   - identical mark
   - identical goods or services (national reg can be narrower or narrower, but if wider, seniority can only be claimed for goods/services falling within scope of EUTM)

Question 6

When can a seniority claim to be made?

Answer 6

At the time of filing a new EUTM application
Within 2 months of filing an EUTM application
At any time once the EUTM has been registered

Question 7

What do you need to include in a seniority request?

Answer 7

1. The EU member state of the earlier mark
2. Filing date of the relevant registration
3. Number of the relevant registration
4. Goods or services for which the mark is registered

No official fees payable

Question 8

What is something important to be aware of when claiming seniority?

Answer 8

Enlargement of the EU

When the EUTM first came about there were 15 EU member states, since then more have joined (then the EUTM will automatically cover these countries)

However possible that national reg may have earlier filing date than the date of a new member state joining. The EUTM will only have effect in the new member state from the date of accession of that member state to the EU.

Question 9

Are seniority claims examined?

Answer 9

Limited examination

Check that earlier mark was registered/not lapsed

Will be issued with a deficiency notice if more documents required

Question 10

Are there any risks to seniority?

Answer 10

Not a lot of case law

But if you only use your mark in one part of the EU, your EUTM could be vulnerable to cancellation by third parties (so sometimes sensible to keep national registration where you use)