No country for old trademarks

The seniority concept allows for trademarks in individual EU countries that correspond to a Community trademark (CTM) to be embedded in the CTM record so that the national marks can be allowed to lapse without any loss of protection. The owner of a CTM will have the same rights as he or she would have had if the earlier national trademarks had continued to be registered.

Allied to this, the Office for Harmonization in the Internal Market (OHIM), national IP offices and IP user organisations have been working together through the Cooperation Fund programme to create a solid common database to harmonise the information on seniority and to strengthen the implementation of seniority at national level.

In theory, this should apply in Romania, where the harmonised Romanian Law on Trademarks came into force in October 2010, three years after Romania’s accession to the EU. The regulation implementing the provisions of the new law came a month later.

Even before then, between 2006 and 2009, Romania was recognising seniority and, in February 2013, OHIM and the Romanian State Office for Inventions and Trademarks (OSIM) announced that Romania had implemented the seniority programme.

However, while the legal text has been duly harmonised and OSIM is working to improve the seniority database, decisions issued by the courts in seniority conflict cases suggest that the reality does not yet match the theory.

Seniority refused by the Romanian Court of Appeal

The Bucharest Court of Appeal, in decision 59A/18.02.2010, stated that: “The argument by which the seniority of the CTM arising from its international registration is brought into the discussion, is not a relevant argument [….] Claiming such seniority would be relevant in determining the moment when the CTM started to come into effect in the member states—a question irrelevant in the pending dispute—but not to extend its effects beyond the specified territorial limits for the period when Romania was not a member.”

What the decision did not take into account was that the seniority request for the implementing registration dated March 19, 1997, to apply to Romania was filed no earlier than January 8, 2007, when Romania was already a member of the EU and, therefore, should have been a full beneficiary of its CTM system. As a result, the seniority claim was accepted by OHIM and registered on January 15, 2007.

“The conversion according to Articles 68 and 27 of Romanian trademark law ... because of the seniority of the international regulation ... should have been recognised from 1997, and not from 2007.”

The same decision took away the protection conferred to senior trademarks, stating that “[…] the seniority of the implementing registration of identical trademarks is a claim with no legal grounds because it would mean that a (unique) protection that would have commenced upon the international registration of the trademark and would have continued to be enjoyed by the CTM is claimed, ignoring the fact that the two types of trademark are subject to different regulations, which establish limitations—in time and space—to the protection granted to the owners that choose one or the other of the trademark registration systems.”

However, Article 34 of the CTM regulations specifically accepts a seniority claim referring to a trademark registered under international arrangements having effect in a member state, and as long as Romania is signed up to the Madrid System and the Madrid Protocol (from 1969 and 1998, respectively), the implementing regulation’s designation of trademarks being fully protected in Romania from the date of accession and at the date of a seniority request, the seniority of such a designation is fully protected and should be admitted as a previous right from the time the international regulation came into force in Romania on March 19, 1997.

As the seniority project confirms: “The right obtained by national registration will continue to exist under the umbrella of the CTM.”

A divergent national office point of view

Unfortunately, the case above is not the only one and a similar opinion has come from the actual body which, in 2013, adopted the seniority programme.

OSIM itself, in decision 177/30.05.2013 referring to a request for the conversion of a CTM dated January 10, 1997, noted the seniority of the implementing regulation dating from March 17, 1997. The seniority claim was filed with OHIM on January 8, 2007.

The opinion stated that “such a method of attributing a filing date” represents a “source of instability for the Romanian trademark system”, due to the “retroactive creation of priorities”.

The opinion considers that “[...] the provisions of Article 112(3) of the CTM regulations refer to the general rule of conversion—ie, the situation of conversion of a CTM into a national trademark in a state which is a founding member of the CTM system (EU15) […] Yet, in the case at issue, as this is a transformation of a trademark whose validity extended to Romania after the accession (with the date of filing with the OHIM before the accession of Romania to the EU), Article 112(3) is not applicable; instead, […] the provisions of Article 165 of the CTM regulations [...] should be applied.”

Such an approach is discriminatory because it considers that seniority is a right bestowed exclusively to 15 member states and denies the applicability of the Trademark Directive provisions of Article 1: “This directive shall apply to every trademark [...] which is the subject of registration or of an application in a member state for registration […] or of an international registration having effect in a member state.”

Moreover, the provisions of Article 165 are explained in the Manual Concerning Proceedings before OHIM, Part 1, Enlargement Section, where, by pure coincidence, an example concerning a seniority claim for a Romanian trademark is described.

There, the seniority claim, which refers to a trademark protected in Romania by international treaties signed by Romania and filed with OHIM after January 1, 2007, is granted by virtue of Articles 34 and 35 of the CTM regulations

The divergence continues with the statement that “by conversion, both in the case of international trademarks … in which Romania was designated after the date of filing … and in the case of Community trademarks … with a filing date prior to the accession of Romania to the EU, the owner of a trademark cannot acquire rights earlier than on the date when, according to the applicable regulations, such a trademark enjoys protection in Romania, prior to conversion, as there are no legal grounds for that.”

What the opinion did not take into consideration was, again, that the implementing regulation was fully protected and valid in Romania on the date when seniority was claimed with OHIM, a claim made after Romania’s accession in 2007, and also that, due to its seniority, the implementing regulation continued to be accepted and protected from this date.

Moreover, Romanian national legislation, within Article 68 of Law 84/98 (r) and Article 27 of the implementing regulation, refers directly to Article 112 of the CTM regulations so ignoring the applicability of Article 112 implies ignoring the national harmonised law too.

As a consequence, the conversion according to Articles 68 and 27 of Romanian trademark law, not because of the CTM but because of the seniority of the international regulation, fully protected in Romania by the international treaties to which Romania is party, should have been recognised from 1997, and not from 2007, as the divergent opinion suggests.

And, contrary to the same divergent opinion, the recognition of a senior right is not a retroactive recognition of a right obtained before accession but the recognition of a national right, protected first by international treaties, second by seniority and, third, by conversion.

Last and not least, what is the purpose of a national seniority database, including lapsed and surrendered national trademarks, if, following the decisions above, all CTMs have been valid in Romania since January 1, 2007 regardless of the protection granted by seniority?

The same divergent point of view comes with a very peculiar opinion:

“The implementing regulation has a list of goods different from the CTM [...] Therefore, I believe that the seniority claim in this case is irrelevant for the conversion date.”

This approach considers that the seniority in conversion requests is something optional, or that EU and national legislation do not offer such an interpretation.

Also, it contradicts the OHIM practice, which accepts a seniority claim when the goods and services for which seniority is claimed are found both in earlier national registrations and in the CTM register.

Therefore, it is not compulsory for the list of goods/services to be identical; it is sufficient that the list of senior trademarks be included in the CTM list.

Such denial of seniority rights at national level creates difficulties for trademark owners who, voluntarily, did not renew their national protected rights, or surrendered them, considering that duly harmonised legislation and practice would protect their rights conferred by their senior trademarks.

The problem arises at national level both for valid CTMs with an accepted seniority claim and for CTMs that have been registered and converted from CTMs into national trademarks as the seniority is completely ignored by the national judicial and administrative decisions described above and completely misunderstood when it comes to its national effects.