Does a European Community Trade Mark (“CTM”) application for registration take priority over a national mark which was filed on the same day?

The answer to this question was debated in a recent EU case, where company A made an application on 12 December 2003 for a CTM for the word marks “RIZO” at 11.52am and “RIZO, EL ERIZO” at 12.13pm for goods in various classes. On the same day, company B sought to apply for a national mark in Spain and applied to register the word mark “RIZO’S” at the Spanish Patents Trade Marks Office at 5.45pm for goods in one of the classes covered by company A’s applications. Company A opposed company B’s application for the registration of the national trade mark on the basis that its application for the CTMs had priority over the mark.

The Spanish Patents and Trade Mark Office (“OEPM”) rejected the opposition and company A appealed. Company A argued that its CTMs had priority because its application for the CTMs had been filed electronically on 12 December 2003 and that was the date which should have been taken into consideration. OEPM dismissed the opposition holding that the date to consider is the date the documentation was actually submitted, not the date the application was filed electronically. In this case this was 7 January 2004 and so this was the date the CTMs had actually been filed. Company A appealed to the Tribunal Supremo who stayed the proceedings and sought guidance from the European Court of Justice (“ECJ”) as to whether account should be taken not only of the day but also the hour and minute of filing an application for registration of a CTM for the purpose of establishing temporal priority over a national trade mark application which was filed on the same day and where the national legislation governing the registration of national trade marks considers the time of filing to be relevant.
Article 27 of the CTM Regulation provides that the date of filing of a CTM application shall be the date on which documents are filed with the Office by the applicant subject to payment of the application fee.

On the other hand, under Spanish national legislation, the date of filing of applications is said to be the time (including the hour and minute) on which they are received.

The ECJ held that Article 27 of the CTM Regulation had to be interpreted as precluding account being taken not only of the day, but also of the hour and minute of filing of a CTM application with OHIM for the purposes of establishing the CTM’s priority over a national trade mark filed on the same day, where according to national legislation, the hour and minute of filing are relevant.

Simon Miles, IP Partner

This case confirms that the “date of filing” of a CTM application is the calendar day on which the relevant CTM application documents are filed and that the actual time of the filing which can be ascertained where the application has been filed electronically is irrelevant for assessing priority.

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