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CJEU confirms date of filing of a Community Trade Mark

06/06/2012

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CJEU confirms "date of filing" of a Community Trade Mark

snIPpets – June 2012

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A Date in the Life of a Trade Mark...

Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros (“Génesis”) v Boys Toys SA (Case C-190/10)

Executive Summary

The Court of Justice of the European Union (CJEU) has recently considered priority in relation to Community trade marks following a question referred to it by the Tribunal Supremo (the Spanish High Court).  The question stemmed from a case where identical marks for similar goods, were filed on the same day, the first at 11.52am and 12.13pm at OHIM, the second, later in the day at 5.45pm at the Spanish Patents and Trade Marks Office.   The CJEU confirmed that timing to the hour and the minute of a Community trade mark application is irrelevant when establishing priority over a national trade mark.

The case reveals differences in European and some national trade mark laws, including Spanish law, on the timing of filing.

CTM Practice

Article 27 of the CTM Regulation recognises the date of filing of a CTM application as the date on which the documents... are filed with OHIM by the applicant.

Spanish Practice

Spanish trade mark law (Ley 17/2001 de Marcas), however, differs from CTM practice in that Articles 11 and 13 recognise “the day, hour and minute” as forming part of the constitution of the filing date of an application.

The Facts

The case arose when Génesis filed two electronic applications at OHIM for RIZO and RIZO, EL ERIZO at 11.52am and 12.13pm respectively on 12 December 2003.  Later that day at 5.45pm, Boys Toys filed an application for the mark RIZO’S at the Spanish Patents and Trade Marks Office, both applicants filing for goods in class 28.  Génesis opposed the national Spanish application, claiming its marks had priority because they had been filed earlier in the day.  The case went backwards and forwards through the Spanish courts, with the opposition and subsequent appeals being dismissed and the RIZO’S mark registering during the process.  Eventually, the Spanish High Court stayed the proceedings and asked the CJEU whether the hour and minute of the filing of a CTM were relevant to establishing priority over a national trade mark.

The Decision

The CJEU issued a lengthy decision in the case and noted that the 27 member states of the European Union do not have identical provisions in their respective laws for establishing the date of filing.  Some refer to the “day” of filing, others follow the Community wording with “date” of filing.  However, “date” or “day” refers to a particular day in a month and year; they do not imply a need to state the hour or minute of the filing of an application.  The Court held that, had the Community legislature considered that the precise hour and minute of filing of a Community trade mark application should be taken into account, it would have legislated for this - it did not. 

Conclusion

When a Community trade mark is filed electronically, OHIM acknowledges the filing with the date and hour of receipt of the application. This information is, according to this decision, irrelevant.  What counts is the date of filing.

So where does that leave Boys Toys with their identical, later filed application in Spain, a country which does recognise day, hour and minute of filing in its national law?

As Community law does not recognise the hour and minute of filing an application for a Community trade mark for the purposes of establishing that Community trade mark application’s priority over a national trade mark, the RIZO’S mark remains registered.

The case is interesting for trade mark owners since it confirms “date of filing” within the context of a Community trade mark application when establishing priority of national applications.  It does not, however, consider the consequences of two identical trade marks, filed at OHIM on the same day.  Trade mark owners – watch this space...

Claire Lehr, associate, IP Protection and IP Enforcement and Litigation at Fieldfisher.

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