The EU trademark system has a very unique and peculiar feature called “seniority”. In simple terms, seniority allows a trademark owner to “link” its earlier trademark registration to a later EU trademark. The details of the national trademark, in particular the filing date, will become part of the EU trademark. This means that the national registration can be allowed to lapse without losing the rights conferred by it. The national registration will, in a way, continue its life as part of the EU trademark.
The basic concept
Often companies register their first trademark in their own country. Sometimes they can register their trademark in several EU countries. Over time, they may be in a situation where they have national registrations in EU countries, as well as an EU trademark registration. Since the EU trademark covers all EU member states, there is an overlap between the registrations. In itself, this does not matter, but over time it is more expensive to maintain many overlapping registrations.
Here’s a possible scenario. Company A files a trademark application in Germany on the 1st of January 2010 and in Austria on the 1st of February 2010. A bit later, they’ll decide that they also need an EU trademark, and file for that on the 1st of January 2015. All marks are registered, so they will end up with overlapping rights in Germany and Austria. In both countries, they have a national trademark and an EU trademark. The only difference is that the national trademarks have an earlier filing date than the EU trademark. If two trademarks are in conflict, the one with an earlier filing date will generally win. Therefore it is generally advisable to keep old trademarks alive, even if you later file new trademarks. The further back in history you can claim your rights, the better it is.
As said above, claiming seniority will enable you to “link” your national trademarks of any EU country to be part of your EU trademark. If company A in the above scenario was to claim seniority of its German and Austrian trademark registrations, the EU trademark registration would be recognized as giving valid trademark rights with respect to Germany as of the 1st of January 2010 (the application date of the German trademark) and with respect to Austria as of 1st of February 2010 (the application date of the Austrian trademark). For all other EU countries, the EU trademark would give protection as of the 1st of January 2015 (the filing date of the EU trademark). Once the seniority is recorded, company A could voluntarily surrender the national trademark registrations, or simply not renew them when renewal was due.
The EU trademark regulation states the principle like this: “Seniority shall have the sole effect under this Regulation that, where the proprietor of the EU trademark surrenders the earlier trademark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trademark had continued to be registered.”
In our example, after recording the seniority, company A could still be able to rely on the rights conferred to it by its German and Austrian trademark registrations even after they ceased to exist.
Conditions for seniority
Seniority can be claimed if the marks are identical, the owner is the same, and the EU trademark covers all the same products and services as the earlier national trademarks that are registered in the EU.
If the EU trademark covers more products than the national registration, the seniority will be effective only for those products that the earlier trademark covered. In the example above, if company A’s trademark in Germany covered “hats” in class 25, and the EU trademark covered “hats and gloves” in class 25, after claiming seniority the EU trademark would give rights in Germany for “hats” as of the 1st of January 2010 (the filing date of the German trademark) and for “gloves” as of the 1st of January 2015 (the filing date of the EU trademark). The EU trademark would have two separate starting dates for Germany.
Critical assessment is always needed
While seniority is a great tool for streamlining the handling of your trademark portfolio in European countries and trimming costs of maintaining the portfolio, there are issues that need to be taken into account before allowing the national rights to lapse.
Here are some of them:
- Some national trademarks have a broader geographical scope than just their own country. For example, a Danish trademark is valid in Greenland and Faroe Islands. A French trademark is effective in Corsica and some overseas territories. The EU trademark is not valid in these territories, so it is possible that there will be some territorial implications.
- If the EU trademark registration is not used for five years, its validity can be challenged. While the same rule applies to national trademarks, in some instances it may be easier to satisfy the use requirement for national trademarks. If the EU trademark registration is cancelled for non-use, and the national registration has been allowed to expire, there are no trademark rights left in that country (unless there are other registrations as well).
- If you have pending opposition or infringement cases where you rely on the national trademark registration, they will be most likely affected if your national trademark ceases to exist. This is the case even if the seniority is accepted for the EU registration.
- If your national trademark contains goods and services that are not part of your EU trademark, you cannot claim priority for them. Your rights will be diminished if you allow the national registration to expire.
- You may have contractual rights and obligations that are dependent on the existence of a particular national registration. These may relate to for example licensing or franchising.
- There is inherent value in having old historic trademarks. For example, many breweries and confectionary companies still maintain registrations that are more than 100 years old. They have historic significance, they are part of the story of the company. For example, the Irish trademark registration No. 38205 GUINNESS for “beer” was registered on the 2nd of March 1889.
Conclusion
The concept of seniority allows you to trim your European trademark portfolio by letting national trademark registration expire while still benefiting from the rights conferred by them. Nonetheless, it should always be critically assessed whether in the given circumstances there are some factors that would adversely affect your overall situation, such as diminishing the geographical scope of your rights. In most cases, we recommend using seniority claims whenever they are available.
