EUTMs and the benefits of a seniority claim

By Vanessa Harrow,

A seniority claim allows the owner of a European Trademark (EUTM) to claim prior rights based on existing national trademark registrations within member states of the European Union. A successful claim extends EUTM rights in the country claimed back to the date of the earlier national registration. However, this doesn’t necessarily mean that you should allow the earlier national rights to lapse, explains Novagraaf’s Vanessa Harrow. 

The seniority system recognises the benefits of having a streamlined 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 UK right, with an earlier filing date; for instance, 1 January 2000. This is the date from which the UK 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 the UK from the earlier UK filing date of 1 January 2000.

The UK national registration could then be allowed to lapse without the owner losing the 10 years of earlier rights in the UK.

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.

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 on 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.
  • 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.
  • In principle, ownership of a UK registration provides a defence to an infringement action in the UK. No such defence is available from a EUTM registration.
    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.

A note on Brexit

While the exact terms of the UK’s exit from the EU is not certain, it is looking likely that EU registered IP rights be automatically granted continued protection in the UK without re-examination and without additional charge (read the full update here). That said, there is much that still needs to be discussed. For that reason, it is recommended that UK national registrations should be maintained until the fate of UK rights derived from EUTMs is better understood.

Vanessa Harrow is a Trademark Attorney at Novagraaf in Manchester

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