The Seniority Project was initiated in 2012 following an apparent poor implementation of Directive 2008/95/EC which aimed to regulate and uniform laws relating to trademarks within the member states of the European Union. This directive included a drive to update Intellectual Property databases to include information on seniority. Nevertheless, this upgrade was largely neglected as only a small number of member states adhered to the requisites of this Directive.
According to the OHIM, several member states regard non-renewed trademarks as ‘expired’ or ‘cancelled’ even when seniority has been claimed under the CTMR for the trademark in question. This contrasted with provision 14 of the Directive, which stipulates that ‘Where the seniority of an earlier trade mark which has been surrendered or allowed to lapse is claimed for a Community trade mark, the invalidity or revocation of the earlier trade mark may be established a posteriori.’ This highlights the importance of keeping correct records in national Patent Offices since without such records this provision would be problematic to apply.
Articles 34 and 35 of the CTMR lay down the basis for seniority claims. These provisions state that the owners or applicants of CTMs who already hold a prior identical registered trademark in any EU member state for identical goods or services provided under the provisions of the Nice Classification may claim seniority of that mark. Thus, these provisions clearly indicate that these rights have been reserved even if the national trademark registration has been surrendered or expired due to non-renewal through the authority granted by the CTM registration.
Logistical and administrative differences between different member states of the European Union led to disproportionate improvement regarding seniority claims, mostly since the provisions of Directive 2008/95/EC were not fully implemented. Other difficulties, such as different registration numbers granted to trademarks with regards to seniority differed from the national IP Office to the OHIM’s online database rendering search results inconclusive or elusive.
The Seniority project aimed to revitalise the efforts to compile this information in one database accessible throughout the European Union in order to enable IP Offices to harmonize information pertaining to seniority, besides achieving compliance with the provisions of the Directive and providing enhanced protection of intellectual property for their users at a national level regardless of the database used to effect any requested searches. Such a database would serve to bring about additional advantages such as increased certainty in intellectual property and avoid unnecessary disagreements and litigation, as well as other aspects which would be beneficial to both IP owners and representatives.
The Seniority Project is divided into two stages. The First Stage can be described as a process through which the internal databases of different member states will be upgraded to include details such as seniority, whilst the Second Stage aims to compile all these databases into one European-wide platform such as the online databases provided by the OHIM through its website. The First Stage has been successfully overcome by a number of member states, who agreed on common terminologies and standardised vocabulary to render this process uniform in nature. The First Stage was completed after the establishment of a Seniority Working Group, which processed information from eleven EU member states, amongst them France, Ireland, Italy and the UK.
By November 2012, the Czech Republic, Ireland, Hungary and Portugal had already implemented the aims of the Seniority Programme in full. A further eleven member states, including Sweden, the UK, France and Greece are scheduled to meet these requirements by the end of 2013. In May 2013, Malta became the 14th EU Member state to implement the Seniority Project.
The aims of the Seniority project are important in order to increase certainty with regards to trademarks and their ownership, as well as to avoid unnecessary confusion in the provision of goods and services by companies. The level of participation experienced by this project has shown that the initiative was welcomed throughout Europe and that a potential lacuna in trademark registration has been successfully addressed. However, steps must be taken to ensure that more IP Offices participate in order to ensure a harmonized database for the benefit of IP owners and representatives alike.
By Edward Mario Camilleri and Dr. M. Clara Borg