Dream World Seniority Portfolio Management Strategy: the Dancing Queen Sandrine Peters, Garrigues Dr. Andreas Renck, Hogan Lovells
Table of Content 1. What is seniority 2. Formal Requirements When and how seniority may be claimed 3. Substantive Requirements Triple Identity Rule 4. Examination of Seniority Claims 5. How seniority is lost in whole or in part 6. The Effects of Seniority in the CTM system and in national or regional Laws 7. Cooperation Fund 8. The MPI Study 2
What is seniority Seniority/ies is a new concept created by the Regulations establishing the Community trade mark which entered into force on 1 April 1996. In a nutshell: Seniority allows the applicant for a CTM or its holder to consolidate his earlier national trade mark rights under the roof of a CTM by claiming the date ( seniority ) of an earlier national trade mark to the extent that the marks, the goods and services, and the holders are identical. A valid seniority claim will allow the owner of the CTM eventually to abandon his national trade mark registration without any loss of rights which result from the national trade mark registration as long as the CTM continues to exist. This may eventually bring with it substantial savings administratively and financially. Alex von Mühlendahl (ECTA Special Newsletter No. 30 May 1996) 3
Today s Legal Background Articles 34 and 35 of Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (referred as CTMR) Rules 1(1)(h), 8, 9, 28 of Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (referred as CTMIR) Article 153 CTMR and Rules 108 to 111 CTMIR for International registrations designating the EU Article 14 of Directive (EC) No. 2008/95 of 22 October 2008 to approximate the laws of the member states relating to trade marks (referred to as TMD) Some EU national laws have incorporated provisions on seniority, such as Germany or the UK 4
Seniority Priority - Art 34(2) CTMR states that: Seniority shall have the sole effect under this Regulation that, where the proprietor of the Community trade mark 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. - Art 4 of the Paris Convention (and art 29 to 33 CTMR) any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. 5
Seniority Priority Seniority does not affect the CTM but enables to keep a national right alive without t further renewing it Priority does affect the CTM as the effects of the CTM goes back to the priority date Confirmed e.g. by Cancellation Division in its decision of 29 June 2010 in case 2762 C and Opposition Division decision of 7 October 2010 in case B 1319914 6
Formal Requirements When and how seniority may be claimed When Seniority can be claimed either - at the CTM application level (Art. 34 CTMR) when filing the CTM application or within two months thereafter (Rule 8.2 CTMIR), or - after registration of the CTM (Art. 35 CTMR) - similarly Art. 153 CTMR applies for seniorities claimed in connection with EU designations, but with exceptions 7
Formal Requirements When and how seniority may be claimed How by filing a request containing information about the mark the country of the earlier mark the owner the application and registration date the goods and services covered by the mark Rule 1 (1) H CTMIR (if claimed with the CTM application) and Rule 8 (2) CTMIR (if claimed within two months thereafter) when claimed with application three months period for filing supporting documents following seniority claim - Rule 8 (1) and 8 (2) CTMIR when claimed after registration relevant documentation is to be provided at the time of claiming seniority - Rule 28 (1) CTMR 8
Formal Requirements When and how seniority may be claimed Where for CTMs with OHIM for an IR designating the EU at the time of filing the IR with WIPO after registration with OHIM 9
Formal Requirements When and how seniority may be claimed The requested documents have evolved Initially you needed certified copies Decision No EX-96-3 and Communication of the President of the office 3/96: Instead of earlier registered trade mark certified by the competent authority to be an exact copy of the registration an accurate photocopy of a document issued by the competent registration authority accompanied by a statement by the applicant or representative that the information contained in the photocopy corresponds to the current status of the relevant registration at the time of submitting the photocopy except when the original i document has been issued not later than six months before the date on which the photocopy was submitted. 10
Formal Requirements When and how seniority may be claimed Communication of the President of the Office 2/00 further facilitate the documentation: The Office will accept as appropriate documents not only certificates (or photocopies thereof) but also copies from official publications of the respective offices concerned. Furthermore, the Office will accept printouts from databases which contain the relevant information and are compiled from data made available by the respective office, regardless of whether the database itself is official or a private one established for purposes of data collection and dissemination. The Office will no longer require any affirmation, certification, etc. as to the accuracy of the data contained in the document. According to Decision of the President of the office No EX-05-5 where the required information is available to the Office on the Website of the central industrial property office of the Member State or of the International Bureau, the Office will make a note to this extent in the file of the trade mark application or registration and no documentation has to be filed. 11
Substantive Requirements The Triple Identity Rule The substantive requirements are to be found in Articles 34.1 and 35.1 of the CTMR Article 34 (1) CTMR providing for seniority claims made at the CTM application level states that The proprietor of an earlier trade mark registered in a Member State, including a trade mark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade mark for registration as a Community trade mark for goods or services which are identical with or contained within those for which the earlier trade mark has been registered, may claim for the Community trade mark the seniority of the earlier trade mark in respect of the Member State in or for which it is registered. Article 35 (1) CTMR providing for seniority claims made after registration of the CTM states that The proprietor of a Community trade mark who is the proprietor of an earlier identical trade mark registered in a Member State, including a trade mark registered in the Benelux countries or of an earlier identical trade mark, with an international registration effective in a Member State, for goods or services which are identical to those for which the earlier trade mark has been registered, or contained within them, may claim the seniority of the earlier trade mark in respect of the Member State in or for which it was registered. 12
Substantive Requirements The Triple Identity Rule Seniority can only be claimed of an earlier EU national trade mark registration, where the CTM and the national mark: - have an identical owner - concern an identical mark - have identical goods and/or services = Triple Identity Rule 13
Substantive Requirements The Triple Identity Rule A. Earlier EU national trade mark registration Earlier = the national mark must have a filing date or a priority date that is earlier than the filing date or priority date of the CTM application filing date determined by national law (some countries allow deferral) Exception: accession of new member state (art. 165 CTMR) EU = the national mark must be a trade mark issued by one of the Member States (including Benelux) IRs designating an EU member state can also be the object of a Seniority claim Trade marks registered in Gibraltar are not marks registered in a Member State according to OHIM Registration = the national mark must be a registration issues may occur if an IR is registered at the time of claiming seniority but later receives an objection and final refusal of protection (see also below) 14
Substantive Requirements The Triple Identity Rule B. Identical Owner Identical owner = identical natural person or identical legal entity Differences in address or different indications do not alter the identical ownership requirement Should the earlier mark be registered through multiple owners, in order to be able to claim seniority, the CTM needs to be registered in the name of the identical multiple owners When does owner have to be identical - at the time of claiming seniority and/or at the time when the seniority claim takes effect? What happens when national mark is transferred after recording of seniority claim? In our view both at the time of claiming seniority and when the seniority claim takes effect What happens when there is a change of name not affecting the legal entity? In our view not recording the name change at the national level does not effect seniority claim. 15
Substantive Requirements The Triple Identity Rule C. Identical Mark Identical mark = there might be visual differences that do not alter the identical nature of marks, e.g. if the earlier mark is a word mark where the national office does publish it in a different typeface than OHIM if the differences are only in shades (but not if the earlier mark is a coloured figurative mark while the CTM is not) if there is only a space between two words of a mark (see Decision of the Second Board of Appeal dated 15 July 1998 - the Decision considered THINKPAD and THINK PAD to be identical In its Communication No 2/00, the OHIM stated that: As concerns the same marks requirement, the Office will apply a strict standard No recent case law available 16
Substantive Requirements The Triple Identity Rule D. Identical Goods and/or Services Identical goods/services = seniority will only be valid and extend to those goods/services that are identically contained in the earlier mark and the CTM registration Partial seniority is possible if earlier mark and CTM do cover different goods; loss of rights possible What about general terms? data processing equipment covers computer hardware, computer software, computer accessories, hence mouses, pen-drives, etc. class headings? Interpretation will depend on ECJ ruling in the IP Translator case [C-307/10] and some seniorities may cover less in the future 17
Examination of Seniority Initially the formal and substantive requirements were checked October 1997 OHIM decided to temporarily suspend the examination of seniority claims based on Art. 34 CTMR in the application stage, while continuing examination of seniority claims pursuant to Art. 35 CTMR after registration. This was resumed in 2000 (Comm. 2/00) In 1998, the Office decided to proceed with the registration of seniority claims but without undertaking an in-depth examination of seniority claims (Comm. 6/98) In 2000, the Office decided that as regards the triple-identity requirements (same owner, same marks, same goods and services), it is for the applicant to make certain that these requirements are met. The Office will examine only the second of these, i.e. whether the marks are the same. The other two owner, goods and services will not be examined, except that the Office may refuse a seniority it claim where it is obvious that t the applicant has made a mistake in his seniority claim 18
How seniority is lost in whole or in part A. Any change that destroys the triple identity rule prior to the seniority claim taking effect, destroys seniority Change of ownership: if the ownership of the CTM changes but not the ownership of the national registration, then seniority is lost Alteration of the mark: If the national mark or the CTM is altered (Articles 43 (2) and 48 CTMR) but not the other, then seniority should be lost Alteration of goods and services of the CTM (Articles 50 CTMR) or the national mark will lead to a partial or total loss of seniority 19
How seniority is lost in whole or in part B. Surrender of a national mark If seniority has been claimed at the application level, the national mark may not be surrendered before the registration of the CTM, otherwise the seniority is lost If seniority it has been claimed after registration ti of the CTM, the national mark may not be surrendered before the acceptance by the Office of the seniority claim, otherwise the seniority i is lost C. Non-renewal of a national mark The earlier national mark may not be allowed to lapse before the CTM has been registered nor before the senioriry claim has been accepted, otherwise the seniority claim is lost 20
How seniority is lost in whole or in part D. Cancellation of seniority claim Where the national mark is cancelled according to Article 14 TM Directive But: where the earlier national mark was still valid and is only revoked or declared invalid due to a national court decision, i the seniority it is not lost, but rather the seniority claim takes effect (see also decision of the Fourth Board of Appeal of 22 February 2010 in case R881/2009-4 [Cromaflex], para 14) 21
The effects of seniority in the CTM system and in national or regional Laws A. Impact of seniority in the CTM system Art. 34.2 CTMR states that: Seniority shall have the sole effect under this Regulation that, where the proprietor of the Community trade mark 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. 22
The effects of seniority in the CTM system and in national or regional Laws B. Impact of seniority in national laws - Conversion Art. 112 CTMR 3. The national trade mark application resulting from the conversion of a Community trade mark application or a Community trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark and, where appropriate, the seniority of a trade mark of that State claimed under Articles 34 or 35. - Art. 14 TMD which approximates the laws of the member states relating to trade marks states that Where the seniority of an earlier trade mark 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. 23
The effects of seniority in the CTM system and in national or regional Laws Scope: Some national marks cover additional territories - National Danish mark and IR designating g Denmark covers Greenland - National French mark covers New Caledonia, Wallis and Futuna, French Polynesia For obtaining trade mark protection in Guernsey, British Virgin Islands, St. Lucia and St. Helena an English base mark is necessary, CTM does not help 24
The effects of seniority in the CTM system and in national or regional Laws What legal effect has a seniority claim? Essentially two legal opinions: the national mark continues to exist a seniority claim is only a priority extension of the CTM in relation to the respective country 25
The effects of seniority in the CTM system and in national or regional Laws The main arguments: The national mark continues to exist the wording of Article 34 CTMR, namely that the proprietor 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 Article 14 TMD allows cancellation of a national mark for which a seniority claim has been made Cancellation Division Decision of 16 July 2009 in case 2509C [Orient Express]; Board of Appeal decision of 15 March 2004 in case R 671/2001-4,,[exacta v EXAKTA], at paragraph p 19; v. Mühlendahl/Ohlgart, Die Gemeinschaftsmarke, 13, para 102 et seq.; Ingerl/Rohnke, Markengesetz, 125c, para 3 26
The effects of seniority in the CTM system and in national or regional Laws The main arguments: The priority extension of a CTM the wording of Article 112 CTMR, namely that the priority date of a converted CTM will have the date of a seniority it for that t country which was registered under the converted CTM Section 6 (b) UK Trade Marks Act 1994 states that an earlier right is a Community trade mark or IR (EC) which h has a valid claim to seniority from an earlier registered trade mark or IR (UK) other national laws contain similar provisions German BPatG decision of 20 September 2005 in case 27 W(pat) 106/04 27
The effects of seniority in the CTM system and in national or regional Laws The recommandation: Look at the impact on the geographic scope loss of protection on search reports uncertainty on international registrations loss of protection on the jurisdiction issue action may become inadmissible on licence agreements and rights in rem - uncertainty the conclusion must be that the national mark must continue to exist under the umbrella of the CTM 28
Cooperation Fund Specific project to improve the functioning of the seniority claim system Creation and harmonisation of seniority databases OHIM's conclusions prior to starting this project seniority claims are not recorded in a universally common format at OHIM links to national marks subject to a seniority claim are missing in CTM online many national offices do not record internally and/or on its online website seniority claims for national marks or IRs wording used for the indication of status t of national marks which h have lapsed or were surrended but with a seniority claim is misleading and very different from office to office 29
Cooperation Fund OHIM's aim is the harmonisation of the vocabulary used for the indication of a status on the register of national marks the harmonisation of standards used for recording seniority claims with OHIM the improvement of links to national databases for seniority claims and searchability of seniority data to make available tools and resources needed to update the national databases 30
Cooperation Fund Some examples General status of mark (Czech PTO) 31
Cooperation Fund Some examples Individual status (German PTO) 32
Cooperation Fund Some examples No information (Danish PTO) 33
Cooperation Fund Results of first meeting status t field: [lapsed/surrendered] seniority claimed for CTM seniority it field: only CTM number(s) no details of marks but link to CTM online no indication of partial or total seniority claim Phase One of project to be finished by end of 2011 34
Study on the Overall Functioning of the European Trade Mark system The Study notes that (4.82) «National laws implementing Art. 14 TMD have chosen different solutions. There is practically no experience with challenges of no longer registered national marks which provide the basis for a seniority claim. Also, there is still uncertainty about how national offices will preserve information about previously registered national marks which are no longer kept alive by their proprietors.» 35
Study on the Overall Functioning of the European Trade Mark system The Study proposes that (4.83 to 4.102 and p. 259/260) 1. Approximation of priority and seniority - Under current law, the seniority effect becomes operative only uppon surrender or non-renewal. It is proposed p that the seniority becomes effective regardless of whether or not the national mark is maintained or surrendered. This effect, would be limited to the Member State where the earlier national mark exists or existed. In essence this will result in the CTM having the priority of the national mark for that relevant member state, in particular for inter partes proceedings - Under current law, seniority effect is lost if the national mark is declared to be revoked or to be invalid, or if it is surrendered prior to the registration date. As regards revocation, the effect should only be lost if the revocation is effective from a date prior to the filing or priority date of the CTM 36
Study on the Overall Functioning of the European Trade Mark system 2. Triple Identity Rule: should be maintained 3. Art. 14 TMD to be amended to provide that after surrender or non-renewal a national mark providing the basis for a seniority claim shall not be subject to «ex post» invalidation or revocation unless it could have been invalidated or revoked at the time of cancellation from the register and at the time of the decision on invalidation or revocation 4. Withdraw the possibility to claim seniority within two months as from the CTM is applied 5. OHIM should be required to examine seniority it claims with regard to formalities and the identity of marks as well as to the identity of the proprietor. An examination of the identity of goods or services is not necessary 37
Study on the Overall Functioning of the European Trade Mark system 6. OHIM should be required to maintain as part of the CTM file the documents filed by the CTM proprietor, or obtained by OHIM on its own initiative, showing the national mark and all relevant details. And, OHIM should agree with all national offices to create a database containing all the necessary information about national marks 7. There should be a fee paid that covers the work of OHIM and to cover other national offices and the potential loss of fee income in case the national mark is not maintained but continues its effects 38
Study on the Overall Functioning of the European Trade Mark system Our views MPI proposal has significant negative impacts as shown above High fee will discourage users to make use of seniority claim system Partial examination of seniority claims is helpful but full examination preferable as it will provide legal certainty t to all stakeholders involved National laws should contain clear rules that national mark continues to exist 39
Conclusion Seniority claims are a very cost effective way to streamline trade mark portfolios no further renewal fees for national marks no national recordal fees in case of transfers less administrative burden to manage marks There are some uncertainties regarding the nature of seniority claims with an impact on geographic coverage by national mark/ctm pending proceedings based on national marks agreements covering national marks agreements covering national marks Moreover, the recordal of seniority claims at national level is not yet consistent and incomplete
Conclusion However, uncertainties should not hinder users to rely on seniority claims because in 2011 it is often not necessary to rely on national marks which are very old since the CTM will be sufficient if yes, acquiesence will often be an obstactle to such action maintaining marks in Denmark, France and the UK will provide coverage of all territories when surrendering or letting to lapse a national mark check whether it was invoked in any pending proceedings or is subject to an agreement the seniority project of the Cooperation Fund will improve the recordal of seniority claims and result in more certainty Therefore: users should use seniority claims to improve their portfolio management
THANK YOU! Sandrine.Peters@garrigues.com Andreas.Renck@hoganlovells.com 42