Trade Marks – Seniority

If a trade mark proprietor owns a national trade mark in one of the EU Member States and subsequently obtains an EUTM registration, the proprietor can surrender or allow the earlier national trade mark to lapse (and thereby avoid paying renewal fees in relation to that mark) but retain the benefit of the earlier mark, in particular its earlier filing date, by claiming for the EUTM the “seniority” of the earlier trade mark. The proprietor of the EUTM is then deemed to have the same rights as he would have had if the earlier trade mark had continued to be registered. In order to claim seniority, the applicant for the EUTM must be the same as the proprietor of the earlier national mark and the marks must be identical. The goods and services covered by the EUTM must be identical with or contained within those for which the earlier trade mark is registered (for instance t-shirts are “contained within” an earlier registration for clothing).
 
If, however, rather than surrendering the earlier trade mark or allowing it to lapse, the earlier trade mark is revoked or declared to be invalid, the EUTM will lose its seniority claim.
 
Where the earlier trade mark was a UKTM, it will no longer be the case following Brexit that the earlier trade mark will be a national trade mark registered in an EU Member State (even if it was at the time of the seniority claim). The Statutory Instrument confirms that the new UK mark that will be created in respect of the EUTM will have the benefit of the seniority claim where the seniority claim is based on an earlier UKTM. On the other side, the Communication No 2/2019 of the Executive Director of the EUIPO provides that although seniority claims based on UK trade marks filed before exit day will be processed and published as usual, any seniority claim filed after exit day will be refused. This could give third parties with intervening rights an opportunity (where none previously existed) to challenge the EUTM – although this would be subject to any unregistered trade mark rights the EUTM proprietor may have developed which pre-date the challenger’s intervening rights.
 
In light of this uncertain scenario, it would be prudent for EUTM owners claiming seniority from an existing UK trade mark to refrain from surrendering the earlier trade mark or allowing it to lapse.
 

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