Claiming Priority or Seniority
An application filed at the Community Trade Mark Office can claim priority from an application filed not earlier than six months beforehand for the same mark and goods/services in a Paris Convention or WTO country.
Rules made under the Community Trade Mark Regulation require the filing
of a certified copy of the basic foreign application, but they also
provide that the President of the Office may reduce these requirements.
The President has indeed reduced these requirements to almost zero.
Where priority is claimed from a foreign national application, no
priority document need be filed if the National Office has a website
that contains details of the priority application and which can be
accessed by the Community Trade Mark Office. Thus, where an application
is filed claiming priority, the Community Trade Mark Office will check
the website of the National Office and verify the priority details in
this way, and no supporting documentation needs to be supplied by the
Applicant.
The Office has not published a list of National Offices to which it has
access. Rather, the Applicant can assume that the Office has verified
the priority claim. If the Office is unable to verify the details of
the priority application, it will advise the Applicant. The Applicant
will then be given a term, usually an extendable term of two months,
within which they should supply the necessary information. This can be
a traditional priority document (certified copy), but alternatively can
simply be a printout, if they are able to obtain one, from the Register
held by the National Office, or alternatively, a copy of the official
filing receipt if this gives all the relevant information including the
mark itself.
Translation
Beware, however, that if the information obtained from the National
Office website is not in one of the official languages of the EU, then
a translation is required. In these circumstances it is recommended
that the Applicant does supply the details of the National application,
in one of the ways just indicated, so that a translation of a specific
document can be supplied.
Seniority
Exactly the same provisions apply in relation to seniority. Seniority
can be claimed where a CTM Applicant or Registrant has one or more
earlier national registrations in member states of the European Union
for the same mark and for goods covered by the CTM. In these
circumstances, if “seniority” is claimed on the Community mark, then
the National marks can be allowed to lapse and their effect will be
continued by the continued effect of the Community mark, without loss
of date. This can be very valuable in reducing the number of renewal
fees which need to be paid. Hitherto a serious deterrent to using the
seniority procedure has been the cost of obtaining certified copies of
all the registrations for which seniority is claimed. This is no longer
required so that in the vast majority of cases seniority can be claimed
by making a request simply identifying the relevant National mark or
marks.
These two simplifications continue the Office’s process of reducing
unnecessary formalities and making the Community Trade Mark more
attractive to Applicants.
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