In terms of trade marks, seniority is a good old principle enabling owners to transfer the rights in their registered trade marks from national to European level. Once seniority has been claimed successfully, the EUTM (European Trade Mark) owner can back date his rights to the filing date of the national registration. Those rights will remain active even if the national registration is subsequently allowed to lapse.

Criteria

 A seniority claim can be made provided that the prior national registration is within an EU Member State, is still in force and is not the subject of pending cancelation proceedings. The EUTM and national registrations also must be in respect of an identical trade mark, with an identical owner, covering identical, or within the scope of the national registration, goods and/or service. The latter three-fold criteria is known as triple identity.

Priority vs Seniority

Frequently there is a moment of confusion when it comes to considering the principles of priority and seniority. The first notable difference is that seniority can go back many years, so long as the earlier registration is still valid. Priority can go back only 6 months to the first filing date of the same trade mark, upon which priority rights are claimed. The second difference is that seniority rights can be claimed in any EU Member State, while priority applies to any Member State of the Paris Convention.

Recording seniority 

The recordal of seniority rights on the EUTM Register, which is done through an online application to the EU IPO, places third parties across Member States on notice as to the owner’s existing prior rights in the trade mark. This is important as it may deter other from opposing the trade mark.

Combining multiple EU national registrations into a single EUTM registration further increases cost efficiency when concerned are registration renewal fees.

Risks

The idea of letting a national registration lapse carries inherent risks for the trade mark. This is namely the case where the EUTM is subject to cancellation or where the acquired seniority rights are challenged. There could be further implications in relation to existing contracts concerning the national registration, or any goods or service not covered in the later EUTM registration. Britain’s exit of the EU also creates further uncertainty as to the use of seniority rights and their effect.

Closing Thoughts

Adding seniority rights to an EUTM registrations has proven to consolidate the respective marks.  The key benefit being deterrence of third parties wishing to bring forth any form of opposition.

The inherent risks of leaving the corresponding national registration to expire, however, appear to carry, a small but still present, risk of loosing the prior rights altogether, for instance, in the event of EUTM cancelation.

Having said that, seniority offers a more cost efficient and practical way of managing a trade mark portfolio. Yet with Brexit ahead, the co-existence of national and EUTM registrations holding seniority rights could be the safe option for many UK trade mark holders.