510 - Stockholm presentation Final - ECTA figurative mark while the CTM is not)coloured figurative mark while the CTM is not) – if there is only a space between two words of a mark

Dream WorldSeniority Portfolio Management Strategy:

the Dancing Queen

Sandrine Peters, GarriguesDr. Andreas Renck, Hogan Lovells, g

Table of ContentTable of Content1. What is seniority2 Formal Requirements2. Formal Requirements

When and how seniority may be claimed3. Substantive Requirements

Triple Identity Rule4. Examination of Seniority Claims5. How seniority is lost in whole or in part6. The Effects of Seniority in the CTM system

and in national or regional Lawsand in national or regional Laws7. Cooperation Fund8. The MPI Studyy

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What is seniorityySeniority/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 y yabandon 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.” g y y

Alex von Mühlendahl (ECTA Special Newsletter No. 30 – May 1996)

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Today’s Legal Backgroundy g g• Articles 34 and 35 of Regulation (EC) No 207/2009 of 26

February 2009 on the Community trade mark (referred as y y (CTMR)

• Rules 1(1)(h), 8, 9, 28 of Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) NoDecember 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 EUregistrations 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

k ( f d t TMD)marks (referred to as TMD)• Some EU national laws have incorporated provisions on

seniority, such as Germany or the UK

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Seniority ≠ PrioritySeniority ≠ 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 hadsame 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 inventionparticular, 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.”p p

5

Seniority ≠ PrioritySeniority ≠ Priority• Seniority does not affect the CTM but enables

t k ti l i ht li ith t f thto keep a national right alive without further renewing it

• Priority does affect the CTM as the effects of the CTM goes back to the priority dateConfirmed 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

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Formal RequirementsWhen and how seniority may be claimed

When• WhenSeniority 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) ormonths thereafter (Rule 8.2 CTMIR), or

- after registration of the CTM (Art. 35 CTMR)similarly Art 153 CTMR applies for seniorities- similarly Art. 153 CTMR applies for seniorities claimed in connection with EU designations, but with exceptionswith exceptions

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• Howby filing a request containing information about– by filing a request containing information about

• the mark• the country of the earlier mark• the owner• 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– 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

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• WhereWhere– for CTMs with OHIM

f IR d i ti th EU– for an IR designating the EU• at the time of filing the IR with WIPO• after registration with OHIM

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The requested documents have evolvedThe requested documents have evolved• Initially you needed certified copies• Decision No EX 96 3 and Communication of the• 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

b itti th h t t h th i i l d tsubmitting the photocopy except when the original document has been issued not later than six months before the date on which the photocopy was submitted”. 10


• 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 p , pprintouts 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 thethe 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 filedto be filed.

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Substantive RequirementsThe 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 internationalmark registered in the Benelux countries, or registered under international arrangements having effect in a Member State, who applies for an identical trade markfor registration as a Community trade mark for goods or services which are identicalwith 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 ”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 thetrade 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 ”was registered.

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S f• Seniority can only be claimed of – an earlier EU national trade mark registration,

h th CTM d th ti l k– where the CTM and the national mark:- have an identical owner- concern an identical mark- have identical goods and/or services

= Triple Identity Rule

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A Earlier EU national trade mark registrationA. 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)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)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 OHIMState 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)later receives an objection and final refusal of protection (see also below)

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B Identical OwnerB. Identical Owner• Identical owner = identical natural person or identical legal entity

– Differences in address or different indications do not alter the identical ownership requirementownership 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?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 entit ?entity?

• In our view not recording the name change at the national level does not effect seniority claim. 15


C Identical MarkC. Identical Mark• Identical mark = there might be visual differences that do not

alter the identical nature of marks, e.g.if th li k i d k h th ti l ffi d– 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)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 available16


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 registrationg

• Partial seniority is possible if earlier mark and CTM do cover different goods; loss of rights possible

• What about general terms?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 IPclass headings? Interpretation will depend on ECJ ruling in the IP

Translator case [C-307/10] and some seniorities may cover less in the future

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Examination of SeniorityExamination of Seniority• Initially the formal and substantive requirements were checked• October 1997 – OHIM decided to temporarily suspend the p y p

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)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)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 theseservices), 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 th Offi f i it l i h it i b i th tthe Office may refuse a seniority claim where it is obvious that the applicant has made a mistake in his seniority claim”

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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 p y g , yseniority

• Change of ownership: if the ownership of the CTM changes but not the ownership of the nationalchanges but not the ownership of the national registration, then seniority is lost

• Alteration of the mark: If the national mark or the CTM i l d (A i l 43 (2) d 48 CTMR) bCTM is altered (Articles 43 (2) and 48 CTMR) but not the other, then seniority should be lost

• Alteration of goods and services of the CTMAlteration of goods and services of the CTM (Articles 50 CTMR) or the national mark will lead to a partial or total loss of seniority

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How seniority is lost in whole or in part

B. Surrender of a national mark• If seniority has been claimed at the application level• 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 i it h b l i d ft i t ti f th• If seniority has been claimed after registration of the CTM, the national mark may not be surrendered before the acceptance by the Office of the seniority l i h i h i i i lclaim, otherwise the seniority is lost

C Non renewal of a national markC. 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 gsenioriry claim has been accepted, otherwise the seniority claim is lost

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How seniority is lost in whole or in party p

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 d t ti l t d i i th i itdue to a national court decision, the seniority is not lost, but rather the seniority claim takes effect (see also decision of the Fourth Boardeffect (see also decision of the Fourth Board of Appeal of 22 February 2010 in case R881/2009-4 [Cromaflex] para 14)R881/2009 4 [Cromaflex], para 14)

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The effects of seniority in the CTM system and in national or regional Lawsnational or regional LawsA. Impact of seniority in the CTM system

Art. 34.2 CTMR states that:“Seniority shall have the sole effect under this Regulation that,

h h i f h C i d k d hwhere 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.”g

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The effects of seniority in the CTM system and in national or regional Lawsnational or regional Laws

B. Impact of seniority in national laws- Conversion Art. 112 CTMR

“3. The national trade mark application resulting from theconversion of a Community trade mark application or aC i d k h ll j i f h M bCommunity trade mark shall enjoy in respect of the MemberState concerned the date of filing or the date of priority of thatapplication or trade mark and, where appropriate, the seniorityof a trade mark of that State claimed under Articles 34 or 35 ”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 beensurrendered or allowed to lapse is claimed for a Communitytrade mark, the invalidity or revocation of the earlier trade markmay be established a posteriori.”

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• Scope: Some national marks cover additionalScope: Some national marks cover additional territories- National Danish mark and IR designating g g

Denmark covers Greenland- National French mark covers New

Caledonia Wallis and Futuna FrenchCaledonia, Wallis and Futuna, French Polynesia

• For obtaining trade mark protection in• For obtaining trade mark protection in Guernsey, British Virgin Islands, St. Lucia and St. Helena an English base mark is gnecessary, CTM does not help

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What legal effect has a seniorit claim?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 i l ti t th ti tCTM in relation to the respective country

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The main arguments:gThe 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 wouldbe deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registeredArticle 14 TMD allows cancellation of a national mark for which a seniority claim has been madea seniority claim has been madeCancellation 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 19; v. , [ ], p g p ;Mühlendahl/Ohlgart, Die Gemeinschaftsmarke,§ 13, para 102 et seq.; Ingerl/Rohnke, Markengesetz,§ 125c, para 3

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The main arguments:The main arguments:The priority extension of a CTM

the wording of Article 112 CTMR, namely that the priority date of t d CTM ill h th d t f i it f th ta converted CTM will have the date of a seniority for that

country which was registered under the converted CTMSection 6 (b) UK Trade Marks Act 1994 states that an earlier i ht i C it t d k IR (EC) hi h h lidright is a Community trade mark or IR (EC) which has a valid

claim to seniority from an earlier registered trade mark or IR (UK) – other national laws contain similar provisionsGerman BPatG decision of 20 September 2005 in case 27German BPatG decision of 20 September 2005 in case 27 W(pat) 106/04

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The recommandation: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 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 i t d th b ll f th CTMexist under the umbrella of the CTM

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Cooperation Fundp

• Specific project to improve the functioning of the seniority claim system – Creation and harmonisation of seniority databasessystem 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 IRsdi d f th i di ti f t t f ti l k hi h• wording used for the indication of status of national marks which

have lapsed or were surrended but with a seniority claim is misleading and very different from office to office

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Cooperation Fundp

• OHIM's aim isth h i ti f th b l d f th• the harmonisation of the vocabulary used for the indication of a status on the register of national marksmarks

• the harmonisation of standards used for recording seniority claims with OHIMseniority claims with OHIM

• the improvement of links to national databases for seniority claims and searchability of seniority dataseniority claims and searchability of seniority data

• to make available tools and resources needed to update the national databasesp

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Cooperation Fundp

• Some examplesGeneral status of mark (Czech PTO)

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Cooperation Fundp

• Some examplesIndividual status (German PTO)

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Cooperation Fundp

• Some examplesNo information (Danish PTO)

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Cooperation Fundp

• Results of first meetingt t fi ld• status field: • [lapsed/surrendered] – seniority claimed for CTM

i it fi ld• seniority field: • only CTM number(s) • no details of marks but link to CTM online• 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• Phase One of project to be finished by end of 2011

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Study on the Overall Functioning of the European T d M k tTrade Mark system

The Study notes that (4.82)y ( )

« National laws implementing Art. 14 TMD have chosen different solutionssolutions.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 officesclaim. 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. »

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Study on the Overall Functioning of the European Trade Mark systemThe 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 that the seniority pp p p ybecomes 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 g p ynational 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 surrendereddeclared 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

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Study on the Overall Functioning of the European Trade Mark system

2. Triple Identity Rule: should be maintained3. 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 revocationdecision on invalidation or revocation

4. Withdraw the possibility to claim seniority within two months as from the CTM is applied

5 OHIM h ld b i d t i i it l i ith5. OHIM should be required to examine seniority 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 necessaryor services is not necessary

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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, showingor 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 informationa database containing all the necessary information about national marks

7. There should be a fee paid that covers the work of OHIM d t th ti l ffi d thOHIM 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

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Study on the Overall Functioning of the

Our views

European Trade Mark system

Our views• MPI proposal has significant negative impacts as

shown aboveshown above• High fee will discourage users to make use of

seniority claim systemy y• Partial examination of seniority claims is helpful but

full examination preferable as it will provide legal t i t t ll t k h ld i l dcertainty to all stakeholders involved

• National laws should contain clear rules that national mark continues to existmark continues to exist

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ConclusionConclusion• Seniority claims are a very cost effective way to

streamline trade mark portfoliosp– no further renewal fees for national marks– no national recordal fees in case of transfers

less administrative burden to manage marks– less administrative burden to manage marks• There are some uncertainties regarding the nature of

seniority claims with an impact ony p– 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

ConclusionConclusion• However, uncertainties should not hinder users to

rely on seniority claims becausey y– 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 actionif 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– 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 thethe 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 managementimprove their portfolio management

THANK YOU!

[email protected]@hoganlovells.com@ g

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Documents

510 - Stockholm presentation Final - ECTA figurative mark while the CTM is not)coloured figurative mark while the CTM is not) – if there is only a space between two words of a mark