Seniority claim

A seniority claim allows the proprietor of an earlier trade mark registered in a Member State, or of an international registration having effect in a Member State, to have its EU trade mark benefit from the seniority of that national right. It is provided for by Regulation (EU) 2017/1001 and may be made in the EU trade mark application or after registration. It allows the national right to be surrendered without loss of the rights it conferred.

Conditions of the claim

The claim requires a threefold identity, strictly assessed, as well as an earlier registration in force, a mere application not being sufficient.

• identity of the proprietor of the earlier trade mark and of the EU trade mark,
• identity of the signs, without any addition or omission,
• identity of the goods and services, seniority applying only to those covered by both rights.

Effects of seniority

Seniority has effect only if the proprietor surrenders the earlier trade mark or allows it to lapse. The proprietor is then deemed to retain in the Member State concerned the same rights as if that mark had remained registered, which preserves the date of its national protection against intervening rights of third parties. Seniority creates no new right. It lapses if the earlier trade mark from which it derives is declared invalid or revoked, a finding that Directive (EU) 2015/2436 allows to be obtained a posteriori, after the national right has lapsed.

Strategic issues

The claim makes it possible to streamline a portfolio by surrendering redundant national trade marks and saving their renewal fees. The choice nonetheless warrants careful thought. The EU trade mark is unitary in character, so that a ground for refusal or invalidity existing in a single Member State may affect it as a whole. If it disappears, seniority disappears with it, and only conversion, subject to strict time limits and conditions, allows national protection to be recovered.

Key points

A seniority claim makes it possible to group national trade marks under an EU trade mark while preserving their seniority. It requires identity of proprietor, sign and goods. Before surrendering a national trade mark, the robustness of the EU trade mark in all Member States and the importance of the market concerned should be checked. Maintaining strategic national rights often remains the safest course, particularly for the markets where most of the exploitation is concentrated.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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