4 - Trade Marks in the EU

Question 1

What are the requirements for seniority?

Answer 1

a) the national mark must be in force at the time the claim is submitted.

b) the TM, owner and goods/services must be identical (“triple identity)

Question 2

When can seniority be claimed?

Answer 2

On filing of the EUTM or within two months of filing, or after the EUTM has been registered.

Question 3

When must the applicant submit a copy of the national registration from which seniority is claimed?

Answer 3

within 3 months of the claim

Question 4

Can a TM proprietor take action against a person selling goods that have already been put on the market?

Answer 4

Not normally, as rights have been exhausted provided the goods were already placed on the market by or with consent of the proprietor.

The only exception is if there are legitimate reasons to oppose further commercialisation, such as change in the condition of goods. Differential pricing is not a reason.

Question 5

What is conversion?

Answer 5

if an EU trade mark application or registration is finally refused, cancelled or
surrendered, it can be converted into trade mark applications in selected EU
states, in which any grounds for refusal or cancellation do not apply

Question 6

What is the main benefit of conversion?

Answer 6

The national application which results from conversion keeps the original date of
application, priority, and/or seniority of the EUTM

Question 7

What are the steps for assessing similarity of marks?

Answer 7

1. Aural, Visual and Conceptual similarity
2. Similarity of goods / services
3. Who is the average consumer?
4. Likelihood of confusion
5. Conclusion