The owner of a Community trademark which is identical to an earlier trademark registered in a Member State may claim the seniority of that earlier trademark for the Community trademark.
Once the claim of seniority is accepted by OHIM, the earlier trademark will continue to produce its same effects through the Community trademark. In case the earlier trademark is not renewed, it would not cause any loss of rights for its owner (1).
This procedure appears tempting since it could lead the owner to consider the non-renewal of its national and/or international trademark(s) with effect in the European Union once the CTM is registered, and thereby reducing costs and simplifying the management of the portfolio of trademarks.
However, any abandonment of the earlier trademark shall be considered carefully. Since the CTM may be cancelled for various reasons, portfolio diversification can make more sense than “putting all your eggs in one basket”.
A provision tempers somewhat the automatic continuation of the earlier trademark through the Community trademark:
“The seniority claimed for the Community trade mark shall lapse if the earlier trade mark the seniority of which is claimed is declared to have been revoked or to be invalid or if it is surrendered prior to the registration of the Community trade mark”.
Does this provision imply that the earlier trademark must still be in force or can it be applied to any trademarks which seniority was claimed, whether or not renewed?
The First instance Court of Paris (Tribunal de Grande Instance of Paris), in a quite opaque judgment (2), decided that this provision, i.e. the cancellation for non-use of a French trademark whose seniority had been claimed, could not apply to a non-renewed trademark.
“Therefore, as the CTM GALLO claims the seniority of the French trademark GALLO of August 30, 1968, the company E & J Gallo has, as the owner of the Community trade mark, the same rights as it would have had if the previous mark of 30 August 1968 had continued, that is to say an earlier existing right prior to the date on which the company Champagne Gallo says they started the winery.
Moreover, the defendant cannot apply for the cancellation of a right that no longer exists.”
According to this ruling, the trademark, which seniority had been claimed and which had not been renewed, cannot be cancelled for non-use, even though this seniority is the very reason why the complainant may succeed.
This interpretation is not consistent with the spirit of the law, which makes the maintenance of registered trademarks conditional upon the genuine use of the mark for each of the products and services (3).
The mechanism of the seniority claim should not allow to circumvent this principle and to grant rights without corresponding duties.
(1) Article 34§2 of the Council Regulation EC 207/2009 of 26 February 2009 on the Community trademark: “Seniority shall have the sole effect under this Regulation that, where the proprietor of the Community trade mark surrenders the earlier trade mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered“.
(2) First instance Court of Paris, 30 January 2014, E&J GALLO WINERY / Champagne GALLO Scev.
(3) 10th Recital of the Council Regulation EC 207/2009: “There is no justification for protecting Community trademarks or, as against them, any trade mark which has been registered before them, except where the trademarks are actually used.”