Seniority Claim, an Advantageous Opportunity, but Did You Carefully Consider What May Happen if You Let Earlier National Trademarks Lapse?

Seniority Claim, an Advantageous Opportunity, but Did You Carefully Consider What May Happen if You Let Earlier National Trademarks Lapse?

As known, a seniority claim enables the holder of a European trademark (EUTM) to claim prior rights in one or more EU member states based on existing national trademarks in the countries concerned.

If the claim is successful, it retroactively extends the EUTM’s protection in those countries to the date of the earlier national registrations, which therefore might not necessarily be kept in force.

The seniority system promotes a more streamlined trademark portfolio while ensuring that owners do not lose their earlier rights.

Let’s make an example:

An EUTM grants its owner protection across all member states from its filing date, say January 1, 2014. If the owner also holds an Italian registration filed on January 1, 2009, if a seniority claim has been recognized, protection of the EUTM in Italy would start from this earlier date.

Upon acceptance of a seniority claim, the EUTM registration would be treated as providing protection in Italy from the earlier Italian filing date. Thus, the national registration could be allowed to expire without the owner losing their rights accrued over the past ten years in Italy.

However, it is not always that smooth and easy as it seems…

How to Claim Seniority

A seniority claim can be made at the time of EUTM application or within two months after filing. Alternatively, it can be filed at any point after registration.

When submitting the claim, details of the national registration must be provided to the European IP Office (EUIPO), and sometimes additional supporting documents are required.

To successfully claim seniority, it is crucial to review the national registration to ensure that the scope of goods does not exceed that of the EUTM. Additionally, the owner’s information on both registrations must match.

Seniority claims can only be made if the trademarks are identical, the owner is the same, and the EUTM encompasses all goods and services covered by the earlier national registrations. If the EUTM covers more goods than the national registration, the seniority claim will only apply to those goods originally covered by the national mark.

For example, if an Italian trademark includes “shoes” and the EUTM includes “shoes and belts,” after claiming seniority, the EU trademark would grant rights in Italy for “shoes” from January 1, 2009, and for “belts” from January 1, 2014.

WHY IS IT ADVISABLE TO CLAIM SENIORITY?

Claiming seniority can reduce costs related to maintaining a trademark portfolio. With a seniority claim, the national registration can be allowed to lapse, saving renewal expenses.

However, it may not be always advisable to let those national rights lapse.

WHY IS IT ADVISABLE TO KEEP NATIONAL RIGHTS IN FORCE?

Despite the benefits of the seniority system, it faces some criticism, and certain considerations should be taken into account before letting national rights lapse:

• Cancellation Risk: EUTM registrations can be canceled if not used for five years. If a cancellation action occurs, the owner must prove usage to avoid losing the registration. National usage requirements may be different than those required by the EUIPO, which are often stricter even if use in a single country may be considered sufficient.
• Invalidation Concerns: EUTMs can be invalidated based on prior trademarks from any EU member state, particularly within the first five years of registration. If an EUTM is canceled after allowing the national rights to lapse, the earlier rights would be lost unless the EUTM is converted, which can be costly and complex.
• Contractual Implications: Any contracts reliant on the existence of national registrations will be impacted if those rights lapse. Adjustments to licenses or agreements may be necessary to reflect that the rights are now held under the EUTM.
• Geographical Coverage: National registrations often extend protection beyond the EU to territories linked to the nation. For instance, Danish trademarks cover Greenland and the Faroe Islands, while French trademarks provide protection in Corsica and various overseas territories.

A similar situation applies to Italian national trademarks, too, which are also valid in the Republic of San Marino thanks to bilateral agreements between the two neighboring States. However, this concerns only national applications and not trademarks either designated through the WIPO or filed before the EUIPO, which would therefore not be valid in San Marino.

• Challenge of Seniority Claims: The validity of an accepted seniority claim can be contested. Indeed, the seniority claimed for the EUTM will lapse if the earlier trade mark in respect of which seniority is claimed is declared to be invalid or revoked. If such a challenge succeeds and national rights have lapsed, rights in that country will only apply from the EUTM filing date, effectively negating the seniority claim.
• Historical Value: Long-standing national registrations can hold significant value. Careful consideration should be given before allowing such registrations to expire, as they can be key to a brand’s heritage. Let’s think for example of the introduction in Italy of the so-called “historical trademarks of national interest” (Marchio Storico), specifically intended to denote the national historical significance of culturally relevant brand names used or registered for at least 50 years and protect them from misappropriation.

Conclusions

The concept of seniority offers a means to streamline your European trademark portfolio while retaining certain rights by allowing national registrations to lapse.

Before making any decisions, however, it is essential to critically evaluate the potential consequences, such as reduced geographical coverage of your rights and other critical risk aspects.,.

We all wish it will not happen again, but 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 might be a risk of loss of rights. 

While seniority can be a useful tool to help strengthen and consolidate European trademark rights, we recommend keeping national registrations in force at least in the most important territories and / or in connection with ‘core’ trademark rights.

Saving money is not always the right decision, in particular in those countries like Italy in which renewal costs are very contained.

For tailored trademark protection strategies in Europe and for knowing our very competitive renewal prices, do not hesitate to contact us our Team.