Chapter 7. National provisions on the effect of a seniority claim
| Author | Office for Harmonization in the Internal Market |
| Profession | European Commission |
| Pages | 103-110 |
Page 103
Pursuant to Articles 34 and 35 CTMR, the applicant for or proprietor of a CTM may claim the seniority of an earlier national mark registered in a Member State, including a Benelux trade mark, or of an earlier international registration having effect in a Member State, either within two months from filing or following the registration of the CTM.
Seniority has the sole effect under the CTMR that where the proprietor of the CTM surrenders the earlier trade mark 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. Until this takes place, the seniority effect does not become operative.
These "same" rights include the right to sue third parties for infringement of the earlier mark and the effect of that earlier mark as an earlier right which can be invoked as a relative ground for refusal, be it against a CTM, in opposition or invalidity proceedings before the Office or in the framework of a counterclaim for declaration of invalidity before a CTM court, be it against a national trade mark before the competent national office or court.
The "earlier right effect" against a CTM follows from the combined application of Article 34 (2) and 8 CTMR.
The "earlier right effect" against a national trade mark follows from Article 4 (2) (b) of the First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC) (the "Harmonization Directive").
The seniority claim accepted by the Office will lose its effects in the following four situations:
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Pursuant to Articles 34 (3) and 35 (2) CTMR, the seniority claimed for a CTM shall lapse if the earlier trade mark is declared to have been revoked or to be invalid or if it is surrendered prior to registration of the CTM. Thus, a successful attack against the national mark automatically destroys the seniority claim.
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A valid claim to seniority has, once it has become operative, the effect that a national trade mark which has already been deleted from the national register is still deemed to be registered. Therefore, the national law must provide that the seniority effect (the deemed continued existence of the lapsed national trade mark) can be attacked in the same way as if the national mark were still registered. This is why Article 14 of the Harmonization Directive provides that, if the seniority of an earlier mark which has been surrendered or allowed to lapse is claimed for a CTM, the invalidity or revocation of the earlier mark may be established a posteriori.
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The seniority effects cease if the substantive conditions (identity of the proprietors of the CTM and the national mark, identity of the trade marks, and -at least partial -identity of the goods or services contained in the two registrations) cease to be fulfilled.
Page 104
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Finally, the seniority effect ceases where the CTM application is withdrawn, deemed to be withdrawn or refused or where the CTM ceases to have effect. In such a situation, where the seniority effect has not yet become operative, the proprietor of the earlier national mark may simply maintain his national mark with all the rights associated with it. Where the seniority effect has already become operative, both the CTM and the rights under the national mark will be lost. The applicant or proprietor of the CTM may, however, convert the CTM or CTM application into national trade mark applications of the Member States, while keeping not only the filing or priority date of the CTM application, but also the seniority date for the respective Member State (Article 108 (3) CTMR - for details see Chapter 8, Conversion), regardless of whether the seniority effect has already become operative.
Dealing with seniority claims under national law involves complex questions, in particular because a mark already removed from the register must be considered as if it were still registered.
The following table lists the provisions in national law on seniority claims and on the effects of claimed seniority, in particular as concerns the earlier right effect against national trade mark applications and the possibility of attacking ex posteriori an earlier national trade mark which has already been removed from the national register. Due to the complexity of the legal questions involved, the provisions of national law are quoted as they are, and no attempt is made to interpret their meaning and their implications.
Page 105
Member State
National provisions on the effects of a seniority claim
Austria
If either at the application stage or after registration pursuant to Articles 34 or 35 of the Community Trade Mark Regulation the seniority of a trade mark which is registered in the Register of the Austrian Patent Office or which enjoys protection in Austria by virtue of an international registration has been claimed for a Community trade mark application or Community trade mark and if that trade mark, upon which the seniority is based, has been surrendered or allowed to lapse by the proprietor, a declaration of invalidity may subsequently be made on the grounds for cancellation set out in ßß 30-34 and 66.
A motion pursuant to paragraph 1 must be filed against the registered owner of the Community trade mark.
If the subsequent declaration of invalidity of a trade mark pursuant to paragraph 1 is sought in the context of ß 33a, the relevant date shall be the date of cancellation of the trade mark giving rise to the seniority due to the proprietor's surrender or, in the case where the trade mark was allowed to lapse, the expiry, and not the application date as referred to in ß 33a
(1), (6).
ß 69a AT-TMLBenelux
Article 2.3 and Article 2.28 (3) (a) shall apply to Community trade marks for which seniority in the Benelux territory is validly claimed in accordance with the Community Trade Mark Regulation, even if the Benelux or international registration on which seniority is based has been voluntarily cancelled or has expired.
Article 2.46, BCIP
Where the seniority of a right in an earlier mark is invoked with respect to a Community trade mark, nullity or revocation of such an earlier right may be invoked even if the right has already lapsed due to voluntary cancellation or to expiry of the registration.
Article 2.47, BCIPCyprus
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Czech Republic
"Earlier trade marks" include:
Community trade marks, which have a valid claim to seniority from an earlier trade mark mentioned in letter a) point 1 and 2 within the meaning of Article 34 of the Council Regulation, even if such an earlier trade mark was surrendered by its proprietor or when such an earlier trade mark ceased to exist;
Section 3, b), TML.
The application resulting from the conversion of the application for registration of a Community trade mark shall be accorded the date of filing or the date of priority of the original application or even the seniority which was claimed under Article 34 and 35 of the Council Regulation.
Section 50, (3), TMLDenmark
"Earlier trade marks" include:
Community trade marks which claim seniority, in accordance with the Community Trade Mark Regulation, in relation to an earlier trade mark, even if the later trade mark has been surrendered or has lapsed.
ß 15 (2)(2), DK-TML
In the Register of Trade Marks information that the seniority of the mark has been claimed in respect of a Community trade mark, shall be entered.Page 106
Member State
National provisions on the effects of a seniority claim
ß 20 No 12, DK-RE
Where the request (for the conversion of a Community trade mark application or a Community trade mark into a national registration) is complied with, the application shall be given the same date of filing, date of priority or date of seniority as the Community trade mark application or the Community trade mark.
ß 10 (2), DK-RE
The provisions in paragraphs 1-6 (administrative revocation) equally apply to registrations for which seniority has been claimed in respect of a Community trade mark, even after these have been deleted from the Danish Register of Trade Marks.
ß 12 (7), DK-REEstonia
"Earlier trade marks" include:
A Community trade mark registered on the basis of the Community Trade Mark Regulation if the filing date of the application, priority date or the seniority date granted on the basis of Estonian registration is earlier.
ß11 (1) (6), EST-TML
A Community trade mark filed for registration on the basis of the Community Trade Mark Regulation if the filing date of the application, priority date or the seniority date granted on the basis of Estonian registration is earlier; A trade mark filed for registration shall be an earlier trade mark only if it is registered.
ß11 (1) (7), EST-TML
If seniority of a trade mark valid in Estonia is claimed for a registered Community trade mark or a Community trade mark which has been filed for registration on the basis of an earlier registered trade mark or the Madrid Protocol pursuant to Articles 34 and 35 of the Community Trade Mark Regulation, an action may be filed for the exclusive right of the proprietor of the trade mark to be declared invalid pursuant to ß 52 of this Act or an action may be filed against the proprietor of a trade mark for the exclusive right of the proprietor of the trade mark to be declared extinguished pursuant to ß 53 of this Act even if the earlier trade mark has been deleted from the register due to refusal to renew the term or surrender by the proprietor.
ß714 , EST-TMLFinland
A trade mark shall not be registered: if it is liable to be confused with a Community trade mark within the meaning of Article 57 that has been registered on the basis of an earlier application or that has seniority from Finland under Articles 34 or 35 of the Council Regulation referred to in Article 57
ß 14 (1) (9), FI-TMLFrance
Where an earlier mark registered in France has not been renewed or has been surrendered and where the seniority of that earlier mark has been claimed for a CTM, the nullity of that mark or the loss of the rights of its proprietor may still be pronounced.
In applying the present Article such a loss shall, nevertheless, only be pronounced where the conditions of forfeiture already existed at the date of the surrender or of the expiry of the registration
Article L. 717-6, FR-IP CODEPage 107
Member State
National provisions on the effects of a seniority claim
Germany
Where, in respect of a filed or registered Community trade mark, the seniority of a trade mark recorded in the Register of the Patent Office has been claimed under Article 34 or 35 of the Community Trade Mark Regulation and where the trade mark recorded in the Register of the Patent Office has been cancelled due to non-renewal under ß 47 (6) or surrender under ß 48 (1), the invalidity of the trade mark on grounds of revocation or nullity may be established subsequently on request.
Invalidity shall be established on the same conditions as cancellation on grounds of revocation or nullity. However, the invalidity of a trade mark on grounds of revocation under ß 49 (1) may only be established if the conditions for cancellation under that provision were also fulfilled at the date of cancellation of the trade mark.
The invalidation procedure shall be governed by the provisions applicable to the procedure for cancellation of a registered trade mark with the proviso that the establishment of invalidity of a trade mark shall take the place of the cancellation of its registration.
ß 125c, DE-TMLGreece
Earlier trade marks include: Community trade marks with a valid claim, in accordance with the Community Trade Mark Regulation, to seniority from a national mark covering the Greek territory even where the national mark for which seniority has been claimed has been surrendered or allowed to lapse.
Article 3, GR-DECREE
Where a Community trade mark claims seniority from an earlier national mark, in accordance with Articles 34 and 35 of the Community Trade Mark Regulation, an application for cancellation of that earlier mark made be made, even where the earlier mark has been surrendered or allowed lapsed.
Article 4, GR-DECREEHungary
"Earlier trade marks" include:
A Community trade mark shall be taken into consideration as an earlier trade mark (Article 76/C) with its duly claimed seniority even if the protection of the trade mark registered by the Hungarian Patent Office under HU-TMA, the seniority of which has been claimed with respect to the Community trade mark, has lapsed by reason of expiration of protection without renewal or by reason of surrender.
Article 76/F (4), HU-TML
A trade mark registered by the Hungarian Patent Office on the basis of this Act, the seniority of which has been claimed with respect to a Community trade mark under Articles 34 and 35 of the Community Trade Mark Regulation and the protection of which has lapsed by reason of expiration of protection without renewal or by reason of surrender, may be cancelled or revoked by reason of non-use, by reason of the trade mark losing distinctive character or becoming deceptive or by reason of the dissolution of the proprietor without successor in title, if the conditions for cancellation or for revocation have existed both at the date of submitting the request and at the date of the earlier lapse of trademark protection.
Article 76/F (1), HU-TML
It shall be indicated in the Trade Mark Register that the seniority of the trade mark has been claimed with respect to a Community trade mark. Loss of seniority shall also be entered in the Trade Mark Register.
Article 76/F (2), HU-TMLPage 108
Member State
National provisions on the effects of a seniority claim
All facts and circumstances concerning trade marks, in particular licenses of use, right of pledge, any other encumbrance of rights relating to trade marks or deriving from trade mark protection as well as transfer and assignment of such rights, shall be entered into the Trade Mark Register even after the lapse, by reason of expiration of protection without renewal or by reason of surrender, of the protection of the trade mark the seniority of which has been claimed with respect to a Community trade mark.
Article 76/F (3), HU-TMLIreland
An "earlier trade mark" means: a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark, even when the latter trade mark has been surrendered or allowed to lapse.
Section 11 (1)(b), IE-TMA
Where the Controller receives a notification under Rule 8(3) of the Community Trade Mark Rules pursuant to Article 34 of the Community Trade Mark Regulation of a seniority claim based on an earlier registered trade mark, the Controller shall note the said seniority claim and such claim is prescribed as a matter to be entered in the register.
IE-S.I. No. 9
Where the Controller receives a notification under Rule 28(3) of the Community Trade Mark Rules pursuant to Article 34 or 35 of the Community Trade Mark Regulation of a seniority claim based on an earlier registered trade mark, the Controller shall note the said seniority claim and such claim is prescribed as a matter to be entered in the register.
IE-S.I. No. 229, Section 3
Where the proprietor of a Community trade mark claims the seniority of a registered trade mark which has been removed from the register under Section 48 or has been surrendered under Section 50 after registration of the Community trade mark, application may be made to the controller or to the Court by any person for a declaration that, if the registered trade mark had not been so removed or surrendered, it would have been liable to be revoked pursuant to Section 51 or deemed invalid pursuant to Section 52, and the Controller or the Court may grant such a declaration accordingly.
IE-S.I. No. 229, Section 4 (1)
Where a Declaration is made pursuant to paragraph (1) the registered trade mark shall be deemed to have been revoked pursuant to section 51 or invalidated pursuant to Section 52, as the case may be, and the Controller shall notify the Office for Harmonization in the Internal Market of any such declaration made.
IE-S.I. No. 229, Section 4 (2)
Where a registered trade mark has been surrendered only in respect of some of the goods and services for which it is registered, paragraph (1) shall apply only in relation to such goods and services.
IE-S.I. No. 229, Section 4 (3)
The provisions of section 51 or, as the case may be, Section 52, and Sections 76, 78 and 79 shall apply, with necessary modifications, in relation to an application to which paragraph (1) applies.
IE-S.I. No. 229, Section 4 (4)Page 109
Member State
National provisions on the effects of a seniority claim
Italy
An "earlier mark" (in the sense that it "shall not be new") includes: trade marks effective from an earlier date on account of a priority right or, in the case of a Community trade mark, a valid claim to seniority.
Article 12 (1)(d), (e), (g), IT- IP CODE
Those entitled to bring oppositions are the proprietor of an earlier registered mark, with an earlier filing date, or where applicable, with an earlier claim to priority or seniority.
Article 177, IT- IP CODELatvia
If pursuant to Article 34 or 35 of the CTMR a CTM enjoys a seniority based upon a relevant earlier trade mark, registered in Latvia or registered internationally with respect to Latvia, when determining the priority of such CTM in Latvia, the filing date and the priority date of the trade mark registered in Latvia or the relevant priority of the internationally registered trade mark shall be accorded to the CTM. The seniority accorded to the CTM shall be retained if the relevant Latvian trademark registration or the international trade mark registration that refers to Latvia is surrendered, or deleted from the Register due to expiration of its period of validity.
Article 39.2 (2), LV-TML
The trade mark registration which served as a basis for the seniority of the CTM can be invalidated or revoked also after the expiration of the validity term of this registration or when the registration is surrendered, provided that the relevant grounds for invalidation or revocation of the trade mark registration existed during the validity of this registration.
Article 39.2 (3), LV-TMLLithuania
An "earlier mark" includes a Community trade mark which claims seniority, in accordance with the Regulation on the Community Trade Mark, from a trade mark referred to in subparagraph 1 or 2 of paragraph 2 of this Article, even when the latter trade mark has been surrendered or allowed to lapse
Article 7 (2) (5) ,LT-TML
Where the seniority of an earlier trade mark, protected under this Law, which has been surrendered or allowed to lapse, is claimed for a Community Trade Mark, the invalidity or revocation of the earlier trade mark may be established a posteriori.
Article 46 (6), LT-TMLMalta
Where the proprietor of a Community trade mark claims the seniority of a registered trade mark which has been removed from the register under Article 39 or has been surrendered under Article 41, application may be made to the registrar or to the court by any person for a declaration that, if the registered trade mark had not been so removed or surrendered, it would have been liable to be revoked under Article 42 or declared invalid under Article 43.
Article 5 (1), TML-CTM RulesPoland
It is not regulated by the Polish Trade Mark Law but since CTMR has a direct effect in Poland it is accepted.
Portugal
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Page 110
Member State
National provisions on the effects of a seniority claim
Slovakia
An application resulting from the conversion of a Community trade mark application shall be granted the date of filing and the date of priority of the Community trade mark application and, where appropriate, the seniority of a trade mark of that State claimed under Article 34 or 35 CTMR.
Article 36 b (3), SK-TMLSlovenia
No specific provision on seniority in the Slovenian legislation. However, provision of CTMR are directly applicable.
Spain
Earlier trade marks include:
CTMs which, in accordance with the relevant regulation, validly claim the seniority of Spanish trade marks or internationally registered trade marks with effect in Spain even if the latter have been surrendered or have lapsed.
Article 6 (2) (b) (1), ES-TLM
Where a CTM enjoys the seniority of an earlier trade mark with effect in Spain, this earlier trade mark may be declared to be revoked or invalid even if it has lapsed because it has not been renewed, because it has been surrendered by its proprietor or because maintenance fees have not been paid, as applicable.
Article 85, ES-TLM
Applications for conversion shall be deemed to have been filed on the filing date granted as an application for a Community trade mark and, if they had a claimed priority or seniority, shall enjoy these rights.
Article 86 (4), ES-TLMSweden
If a mark is confusingly similar to a Community trade mark which is registered on the basis of a later application, an obstacle to registration exists if the holder of the Community trade mark can, as regards that mark, claim the seniority of an earlier trade mark according to the Council Regulation on the Community trade mark.
ß 14 (9), SE-TMLUnited Kingdom
Where the proprietor of a CTM claims the seniority of a registered TM which has been removed from the register under Section 43 or has been surrendered under Section 45, application may be made to the Registrar or to the Court by any person for a declaration that, if the registered TM had not been so removed or surrendered, it would have been liable to be revoked under Section 46 or declared invalid under Section 47.
Section 3, UK-TMCRBulgaria
No specific provision on seniority in the Bulgarian legislation.
Romania
No specific provision on seniority in the Romanian legislation.
