22 May 2012

Seniority Tool from OHIM

In addition to their TMView and EuroClass projects, OHIM is also heading up a cooperation tool with EU National Offices surrounding seniority.

As a quick briefing to those outside of the EU and not completely familiar with the concept of seniority, this allows earlier registrations in EU member states to be 'packaged' into a Community Trade Mark. The national registrations can then be allowed to lapse and renewal fees can be saved; significant savings can be achieved if there are a number of registrations across EU member states.

Named the 'Seniority Tool' this has an aim of harmonised seniority databases. It is not particularly well publicised so far and only 15 National Offices (out of 25) are participating at this moment in time: Benelux, Bulgaria, the Czech Republic, Estonia, France, Greece, Hungary, Ireland, Lithuania, Portugal, Romania, Slovakia, Slovenia, Sweden and the United Kingdom. The non-participation of Germany, Italy, Poland and Spain is particularly noticeable.

OHIM's literature on the Seniority Tool states:

"Several national offices and other national administrations such as enforcement authorities often treat earlier trade marks as 'expired' or 'cancelled', even when seniority has been claimed under the CTM Regulation for that mark. To better comply with Directive 2008/95/EC, EU national offices need to update their databases to include information regarding seniority. By harmonising the seniority information among national offices, the Seniority Tool will help better achieve this goal effectively."

Seniority has been used apprehensively by practitioners, and while the absence of case law will continue to make many nervous at relying upon it, having seniority information on national databases in addition to the OHIM database should add some confidence to the concept.

According to OHIM, four of the participating National Offices, namely, the Czech Republic, Hungary, Ireland and Portugal have implemented the seniority tool into their Office website so I've checked out examples in the latter two databases to see how this works.

Unfortunately, Irish Registration No. 94544 for HEINEKEN shows as 'Removed' and no seniority information is referred to in the database, not even in the 'Notings' field. Not the most encouraging of starts and we must hope that the use of the word "implemented" by OHIM means "implementation in progress" and not "implementation completed".

For Portuguese Registration No. 148893 VIMTO (which I cannot link to) we do have a status of "REGISTRATION LAPSED - Seniority claimed for CTM" so here we have an example of how the tool is meant to work. I could anticipate there may be a need for some education of authorities here to ensure they look beyond the words "REGISTRATION LAPSED" when checking a registration's status.

In the United Kingdom - yet to implement this tool - where relative grounds examination is not performed, the Office does nevertheless notify owners of national marks should a potentially similar later application be advertised for opposition purposes. Conversely, they do not, as a matter of course, notify owners of earlier Community Trade Marks. It will be interesting to note if they may end up sending out notifications to owners of national registrations which have lapsed but are subject to a claim to seniority. I would anticipate not, but the underlying intention in such scenario is to keep the national registration and the benefits this entails (albeit within a CTM to avoid duplication and excess renewal fees).

OHIM continue to invest in tools that fit their name of being an "Office for Harmonisation" although let's hope this one does not prove to be a white elephant when many could prefer the continued (and rapid) development of TMView and EuroClass.