Seniority – the ‘merger’ of Community trade marks (CTM) and identical earlier national registrations of the same mark for the same owner and for the same goods and services – constitutes one of the significant features of the Community trade mark system. In the early years, some 20% of all applications claimed one or more seniorities, while currently this is still the case for some 10%.
The Office was unable to continue examining seniority claims because of the unexpectedly large number of CTM applications filed from the beginning which required the attention of the examining staff to be focused on processing applications from filing to publication. We therefore announced in October 1997 a temporary suspension of examination of seniority claims based on Article 34 CTMR in the application stage, while continuing examination of seniority claims pursuant to Article 35 CTMR after registration.
While it was originally envisaged to resume seniority examination in 1999, this proved impossible due to the unexpected increase in CTM applications filed in 1999 (from 31,000 in 1998 to more than 41,000 in 1999).
Having essentially absorbed the ‘backlog’, the Office will now resume examination of seniority claims at the application stage.
What the Office will propose with regard to unexamined seniority claims for CTMs that have been published or registered in the meantime, will be dealt with as a separate issue.
The nature and scope of seniority examination are outlined hereafter.
Pursuant to Rule 1 (1) (h) and Rule 8 (2) IR, a seniority claim must contain the following indications:
• the Member State or Member States where, or with effect for which, the earlier national mark is registered;
• the date from which the registration is effective;
• the number of the registration;
• the list of goods and services for which the earlier mark is registered.
The revised application form, published in the Official Journal of the Office (OJ OHIM No 1/2000, p. 78), provides for these mandatory indications in the following manner:
• Member State(s): check boxes;
• date: fields for all relevant dates (priority if any, filing date, registration date); at least one of the dates must be indicated;
• number(s): application and registration number; at least the registration number must be indicated;
• goods and services: there are three boxes, one for the case where all the goods or services of the earlier national registration are also found in the CTM application (“total” seniority claim), a second box for the case where seniority is claimed for all the goods and services contained in both the earlier registration and in the CTM application, and the CTM application contains additional goods or services, and a third box for the case where seniority is claimed only for some of the goods or services in the earlier national registration. It is only in this last case that the applicant must include a list of these goods and services.
Where any of the above mandatory indications are missing or are not completed within the two months following the filing date, the Office will treat the application as being deficient as regards the seniority claim. The applicant will be informed about the deficiency and invited to remedy the deficiency pursuant Rule 9 (3) IR within a period of two months. An extension of the period of two months will not be granted. If the deficiency is not remedied within the time limit of two months, the Office will issue a notice of “loss of rights” under Rule 9 (7) IR. This is a notification falling under Rule 54 (1) IR. The applicant may thereafter request, within two months from the notification of loss of rights, a decision of the Office. The Office will either correct its finding of loss of rights and deal with the seniority claim as being in order or issue a decision confirming the loss of rights.
It should be noted in this context that the new receipt that the Office issues since December 1999 contains all the indications that have been entered in the database. Thus, applicants are in a position to control whether all the elements for a complete seniority claim are available.
When the information necessary for a claim is not found in the application form itself but rather in the documents admitted in support of the claim, this will be taken as complying with the claim requirement.
While Rule 8 (1) IR provides for a certified copy of a certificate of registration as the required documentation, Rule 8 (4) IR permits derogations from this strict requirement. The President of the Office has exercised his power under this provision and provided that simple photocopies of such documents are similarly admitted, which, when the photocopies are of documents of a particular age, must be accompanied by a statement affirming the accuracy of the information contained therein (Decision No EX-96-3 of 5 March 1996, OJ OHIM No 4/1996, p.395; see also Communication No 3/96 of 22 March 1996, OJ OHIM No 5/1996, p. 595).
The current approach has proved impractical, time-consuming and burdensome for applicants who will have to obtain a certificate from the respective registration authorities. This has delayed examination of seniority claims in the past.
The Office will now apply a substantially broader approach. The Office will accept as appropriate documents not only certificates (or photocopies thereof) but also copies from official publications of the respective offices concerned (Bulletins, Gazettes, Journals, etc.) where the registration was published, provided that publication contains all the required indications. Furthermore, the Office will accept printouts from databases which contain the relevant information and are compiled from data made available by the respective office, regardless of whether the database itself is ‘official’ or a ‘private’ one established for purposes of data collection and dissemination (such as searching, watching, etc.). The source of such printouts must be indicated so that on the one hand any file inspection will enable third parties to assess its reliability and on the other hand to allow the Office to establish a list of accepted database outputs. It should be pointed out that the applicant will assume the responsibility for the accuracy of the data supplied.
The Office will no longer require any affirmation, certification, etc. as to the accuracy of the data contained in the document.
While it is strongly recommended that the documentation – given its easy availability – be included in the application itself, applicants have three months from the filing date (or the later seniority claim date) to provide these documents. When the documents are missing and not provided for in this period, the Office will issue a deficiency notification pursuant to Rule 9 (3) IR and invite the applicant to submit the full documentation within a period of two months. An extension of the period of two months will not be granted. Such extensions, which are discretionary (Rule 71 (1) IR), do not appear justified in view of the broad range of documents that the Office will accept. If the documentation is not submitted within the time limit of two months, the Office will treat this deficiency in the same manner as a deficient seniority claim, as described above.
The above rules concerning documentation will only apply to seniority claims under Article 34 or 35 CTMR. They will not apply to priority claims, for which Decision No EX-96-3 of 5 March 1996, OJ OHIM No 4/1996, p. 395, and Communication No 3/96 of 22 March 1996, OJ OHIM No 5/1996, p. 595, remain applicable. They will also not apply to opposition or cancellation procedures.
3. Triple identity
As regards the triple-identity requirements (same owner, same marks, same goods and services), it is for the applicant to make certain that these requirements are met. The Office will examine only the second of these, i.e. whether the marks are the same. The other two – owner, goods and services – will not be examined, except that the Office may refuse a seniority claim where it is obvious that the applicant has made a mistake in his seniority claim. This differentiation is justified because between the time of claiming seniority and not renewing or abandoning the earlier national registration changes may occur both with regard to the CTM registration and the earlier national registration which affect the seniority claim.
As concerns the ‘same marks’ requirement, the Office will apply a ‘strict’ standard, as it did at the time when examination was still carried out. The philosophy behind the “strict” standard is that only when such a standard is consistently applied will it be possible to expect national authorities called upon to judge whether rights flowing from a no longer registered national mark which provides a basis for a seniority claim may be invoked to feel bound by a decision of the Office.
The CTM applicant (or the representative) will be notified of a positive (or negative) finding regarding the seniority claim. The applicable Rules and the procedure are the same ones previously mentioned under 1 and 2 above.
The publication of a CTM application under Rule 12 IR will contain, as is currently provided for in the Vademecum, together with the Code ‘350’ an indication of
• the country,
• the registration number,
• the relevant date or dates (priority if any, filing date, registration date).
The Register will contain the indications that have been published under Rule 12 IR.
7. Publication of registrations
Where a seniority claim has been published under Rule 12 IR as indicated above, the publication of the registration will not repeat these indications. However, when changes have occurred in the time between publication of the application and publication of the registration, these changes will be indicated.
8. Certificate of registration
The certificate of registration will contain, together with the code ‘350’, the same indications as are published under Rule 12 IR.
Post-registration seniority claims presented under Article 35 CTMR and Rule 28 IR will be examined in the same manner as outlined above, i.e. limited to formalities (claim, indications, document) and the requirement of ‘same marks’. Pursuant to Rule 28 (2) IR, any deficiency in the seniority claim will be communicated to the applicant within a time limit fixed by the Register Service. The Register Service will apply more flexibility in granting extensions of time limits than the Examination Division under Rule 9 (3) IR.
The seniority examination in accordance with this Communication will be carried out for all CTM applications filed on or after 1 May 2000.
In due course, the Office will issue a revised decision based on Rule 8 (4) and 28 (4) IR.