Seniority: a call to arms

The absence of case law on a particular legal issue can be taken to mean one of two things depending on whether your drinking vessel of choice is half full or half empty. The issue of seniority claims from national trade mark rights in a Community trade mark registration is therefore either a fully settled principle or we stand naïvely on the precipice of a litigation crevasse.

I think I can see Article 34

This Kat wants to believe it is the former, after all seniority is easy to claim: identical mark, identical goods or services and identical owner at the time when the national mark ceases to have effect ('crystallisation').  What's so complex about that?

The idea set out in Article 34 of Council Regulation 207/2009 is simple: EU national marks which correspond to a Community trade mark registration can be embodied in the CTM record so that national marks can be allowed to lapse without any loss of protection, thus reducing renewal fees.

Article 34(2) states that the owner of the CTM shall be deemed to continue to have the same rights as he would have had if the earlier national trade marks had continued to be registered. However, the way in which the data relating to seniority rights are presented by the OHIM and national offices is often inconsistent and unclear.  Fortunately, the OHIM, through its Co-operation Fund, is taking steps to harmonise the nomenclature and presentation. This Kat believes changes may be imminent so watch this space.

The effect of Article 34 is that, once a seniority claim has crystallised into a seniority right, any idiosyncrasies of EU national marks will also be embodied in the seniority claim of the CTM; it is not the case that the CTM will merely receive an earlier priority date for that country as it will also be endowed with any gold-plated features which are bestowed on a national mark. 

Several additional items spring to mind from a UK perspective: a requirement of a bona fide intention to use when filing; a defence to infringement under section 11(1) of the Trade Marks Act 1994; the ability to register a series under section 41(2) of the Trade Marks Act 1994; and the ability to re-register or extend protection to certain overseas territories.

As an example, take UK registration number 2001536, a collective series of four marks [a rare beast - Merpel]:

• FELLOW OF ITMA 
• MEMBER OF ITMA 
• FELLOW OF I.T.M.A 
• MEMBER OF I.T.M.A.

Only one mark in the series can be identical to a CTM; the other marks in the series must "resemble each other as to their material particulars" [do they?] in order to achieve registration, but if seniority was claimed for one of the marks in the series, what happens to the rights in the other marks?  [maybe they become ghosts? - it is nearly Hallowe'en].  If the CTM is converted back to a UK national mark under Article 112 then will the 'ghost' marks be resurrected?

What do you mean, we're not a series?

Perhaps a more alarming difference is the change to the potential geographical extent of the national mark. Some non-EU jurisdictions, mainly former colonies or overseas territories of European countries allow or require the existence of a corresponding national mark for registration to be effective. These territories are unlikely to have provision in their domestic legislation that allows re-registration, or extension, based on a seniority right embodied within a CTM. Some rights to extend the geographic protection based on national marks will therefore extinguish at the time of crystallisation. This affects UK marks and potentially those in France, Denmark, Spain and Portugal. 

As an example, a UK trade mark registration can be extended to Montserrat, the British Virgin Islands and the Falkland Islands.  If seniority is claimed, and crystallises, the resulting right embodied in the CTM cannot be extended. Indeed, if the mark has already been extended to the island territories then the protection will lapse immediately when the UK registration is lapsed or surrendered.

This Kat is sure that there must be more examples of differences between EU national marks and a CTM from the 27 member states of the EU (and Croatia from 1 July 2013).  However, he has struggled to track them all down in a neat and up-to-date table and so has made it his chrestomathic quest to try and cobble it all together into a useful form.  That way practitioners and brand owners can see at a glance what extra bits and bobs a crystallised seniority right endows a CTM.  It will also, (hopefully) identify clearly what rights and opportunities will be lost by allowing a national mark to lapse.

If you think you know of a difference between an EU national mark and a validly claimed and crystallised seniority right, whether theoretical or practical, please drop a line to theipkat@gmail.com with the subject "I've had a seniority moment'.  If anything resembling a report sees the light of day then all contributions will be credited or, for scaredy Kats, kept anonymous.