EUTMs and the benefits of a seniority claim

A seniority claim allows the owner of a European trademark to claim prior rights based on existing EU national registrations. While a successful claim extends EUTMs back to the date of the earlier national registration, this doesn’t necessarily mean you should allow those rights to lapse, says Vanessa Harrow. 

The seniority system recognises the benefits of having a streamlined trademark portfolio and provides a mechanism to help ensure a unified system without owners losing their earlier rights.

For example:

• An EUTM will provide its owner with protection in all member states from the date of filing; e.g. 1 January 2010. The owner may, however, have a national registration, e.g. a German right, with an earlier filing date; for instance, 1 January 2000. This is the date from which the German right would run.
• If a claim to seniority has been made and accepted, the EUTM registration would be treated as having afforded the owner protection in Germany from the earlier German filing date of 1 January 2000.
• The German national registration could then be allowed to lapse without the owner losing the 10 years of earlier rights in Germany.

How to claim seniority

A seniority claim can be entered against an EUTM application at the point of filing or within two months of filing. Alternatively, a seniority claim can be filed at any time following registration.

When filing the seniority claim, details of the national registration must be provided to the European IP Office (EUIPO) and, in some instances, supporting documents will also need to be filed.

In order to claim seniority, it is necessary to review the relevant national registration to ensure the specification of goods is not any broader than that covered by the EUTM. Moreover, it is necessary to ensure the owner details on the national mark match those of the EUTM.

Why claim seniority?

A seniority claim can help reduce the costs of maintaining a trademark portfolio. With a claim to seniority in place, the national registration can be allowed to lapse, thereby saving on renewal costs.

A seniority claim can also help to show a strong history of trademark rights throughout Europe and help to ensure third parties are aware of your national rights in each country. As a result, not only does it allow owners to claim the earlier rights in the national countries, but it also acts as a deterrent to third parties.

A note on Brexit

As part of the Brexit process, the UK government recognised the importance of providing continuity of protection for brand owners, and all EUTMs and designs that were registered at the end of the transition period have now been cloned to create an equivalent right in the UK. As part of this, the UKIPO has also copied over any corresponding UK seniority claims to the newly created national clones.  

For example:

• An EUTM which was filed on 1 January 2018 will have been given protection in all the member states, including, at that time, the UK and that protection will have run from 1 January 2018. 
• If a claim to seniority from a UK registration was made and accepted, the EUTM registration would be treated as having afforded the owner protection in the UK from the earlier national filing date, for instance 1 January 2000.
• If the owner has since allowed the national UK registration with the earlier filing date to lapse, the only protection they now have in the UK is the newly cloned UK registration which takes the filing date of the EUTM, i.e. 1 January 2018. 
• However, in creating the clone, the UKIPO has also cloned the UK seniority claim and the newly cloned right would be treated as having afforded the owner protection in the UK from the filing date of the now lapsed national right, for instance 1 January 2000.

This applies to both those rights which have automatically been cloned from EU registrations and also to clones from pending EU rights which are created by way of filing a conversion application within the nine-month grace period that follows the end of the Brexit transition period. To find out more about Brexit and IP, please visit our dedicated microsite or read our responses to some frequently-asked questions.

Key benefits of maintaining national rights

Nonetheless, the seniority system has come under a certain amount of criticism and the following factors should be considered before allowing national rights to lapse:

• EUTM registrations become vulnerable to cancellation if they have not been used for five years. If a cancellation action is brought against a EUTM, the owner is required to provide evidence of use to avoid the registration being cancelled. Although most national rights are subject to the same use requirements, establishing sufficient use in one national country can be relatively straightforward; however, the same cannot be said for a EUTM. In particular, there is some debate as to whether use within one part of the EU would be sufficient to maintain an EUTM, and the test applied by EUIPO is generally much stricter than that of national offices.
• EUTM registrations can be invalidated on the basis of an earlier trademark in any EU member state. The risk of such an invalidation is particularly prevalent in the first five years of a registration’s life. If a EUTM is cancelled after the national rights have been allowed to lapse, the earlier rights would be lost unless the EUTM is ‘converted’. This is an expensive process and there is some debate over the effectiveness of a seniority claim in this instance.
• If you have any contractual agreements in place that depend on the continued existence of your specific national registrations, these will obviously be affected by allowing the national rights to lapse. If this is the case, you would need to amend any licences, charges or agreements to reflect that the rights are now protected by the EUTM rather than the national registration(s).
• National registrations often extend to territories outside of the EU that have legal ties with the national country and, therefore, can provide greater geographical protection than a EUTM alone. For instance, Danish national trademarks provide protection in Greenland and the Faroe Islands. Similarly, French national registrations provide protection in Corsica, as well as overseas departments and communities, such as Guadeloupe, Martinique, French Polynesia*, French Guiana and Reunion New Caledonia, Saint-Barthelemy and the French parts of Saint-Martin, St. Pierre and Miquelon, Mayotte, Wallis and Futuna, as well as the French Southern and Antarctic Lands. (*Since February 2014, a French national trademark, filed or renewed since that date, only gives protection in French Polynesia if an extension is filed.)
• The validity of a previously accepted seniority claim is open to challenge if an owner later tries to rely on the EUTM. If such a challenge is successful and the national rights have been allowed to lapse, the rights in the country concerned will only date back to the filing date of the EUTM as though no seniority had been claimed.
• A long-standing national registration can be a very valuable asset and careful consideration needs to be given before allowing it to lapse.
• If any of the 27 member states decide to leave the EU, as the UK has recently done, the status of EU rights and corresponding seniority claims is not guaranteed. Whilst the UK has taken steps to ensure continuity of protection for brand owners, this may not be the case if another country decides to leave the EU and depending on the terms surrounding the country’s exit from the EU, there is a risk of loss of rights.  

While seniority can be a useful tool to help strengthen and consolidate European trademark rights, we recommend maintaining national registrations in the most important territories; in particular, for ‘core’ trademark rights. Get in touch with our team today to discuss a tailored trademark protection strategy for Europe.

Vanessa Harrow is Managing Director of Trademarks at Novagraaf in the UK and a Chartered UK Trademark Attorney.