News Item
European Court finds that hour and minute of filing of CTM application is irrelevant
20 April 2012
The Court of Justice of the European Union has recently issued a decision confirming that the specific time of day at which a Community Trade Mark application is submitted is not relevant in ascertaining whether that application takes precedence over a conflicting application filed on the same day at a different time.
Whilst trade mark law within the EU has now been harmonised so as to remove disparities between substantive national rules that may impede the free movement of goods within the EU, such harmonisation is not exhaustive, and Member States of the EU are still free to maintain national rules in relation to a number of areas relating to trade marks, including procedural issues relating to registration of a trade mark. In particular, Member States may apply their own procedural rules for establishing the date of filing of an application for a national trade mark registration.
The case in question, Genesis Seguros Generales SA v. Boys Toys SA, related to such national procedural rules in Spain, whereby the specific time of filing of a trade mark application may be taken into account in determining the relative priorities of conflicting trade marks. The Court was asked for guidance as to whether such national rules could be relied upon by the owner of a Community Trade Mark application in an opposition against a national Spanish trade mark application that had been filed on the same day as the Opponent’s CTM but several hours later.
The Court held that the Community Trade Mark system is an autonomous system with its own set of rules and objectives that are applied independently of any national system. The Court recognised that the Regulation governing the CTM system contains specific and comprehensive provisions relating to the allocation of a filing date of a new CTM application, and that such provisions only make reference to the day, month and year on which an application is filed – no reference is made to the time of day at which the application is submitted. The Court took the view that if it had been intended for the specific time of day to be taken into account, the Regulation would have made reference to this. As a result, the Court found that the time of filing of a CTM application was not to be taken into account when fixing the filing date of that CTM application.
Furthermore, the Court found that the time of filing of a CTM application could not be taken into account under national law in determining the relative priority of that application vis-à-vis a national application since, due to the freedom of Member States to apply their own procedural rules relating to allocation of a filing date, to decide otherwise could result in the extent of protection granted by a CTM differing from one Member State to another, thereby undermining undermine the uniform nature of protection of a Community Trade Mark.
The decision provides valuable guidance on how the CTM system is to interact with national trade mark laws across the EU, confirming that the CTM Regulation is autonomous and independent, and is to be welcomed by trade mark owners since it removes the potential inequity that could otherwise arise from the differing national laws relating to allocation of a filing date.
For more information contact your usual Marks & Clerk attorney. Alternatively, contact Mike Shaw at mshaw@marks-clerk.com