2018/11 > The importance of the use and maintenance of a national trademark that was the basis of a claim of seniority for a European trademark

Any owner of a trademark registered in a Member State of the European Union may claim the seniority of his national trademark for a European trademark for identical goods or services. This claim of seniority has the effect of allowing this owner, if he ceases to maintain his trademark locally, to continue to benefit from the same rights he would have had if his national trademark had been maintained.

However, such seniority expires if the national mark lapses or is declared invalid. In the latter case, seniority will expire provided that the lapse takes effect before the filing (or priority) date of the European trademark (Article 34 of Regulation (EU) 207/2009 and Article 39 of Regulation (EU) 2017/1001).

These provisions should be read in conjunction with Article 14 of the 1st Trademark Directive 89/104/EEC of 21 December 1988 amended in 2008, which is included in Article 6 of the new Directive (EU) 2015/2046. They provide that where the seniority of a national trademark is claimed, and when that national trademark is not subsequently maintained, the invalidity or revocation of the national trademark can be decided after the trademark was abandoned, provided that such invalidity or revocation could have been declared at the time when the trademark was abandoned.

In a decision  of 26 September 2018, the French Supreme Court ruled on a dispute whose whole issue was at what date one should examine the lapse,  of the national  trademark founding the claim of seniority.

In this case, SCEV Champagne Gallo, created on April 8, 2002, was using the Gallo sign as its corporate name to market champagne. Upon being sued for trademark infringement by the owner of a European trademark GALLO dated April 1, 1996 claiming the seniority of a French trademark dated August 30, 1968 for classes 32 and 33, the company obtained, on counterclaim, the revocation of the French trademark for non-use and the cancellation of the European trademark which was filed later than the date of the rights it held over its corporate name.

On appeal, in a decision issued on 6 October 2015, the judges of the Paris Court of Appeal had noted that the French trademark, registered under the 1964 trademark law, had never been used. They pronounced its cancellation with effect from 30 August 1973, which is five years after the publication of its original registration. They thus applied Article L. 714-5 of the Intellectual Property Code, resulting from the trademark law of January 4, 1991, which allows the cancellation to take effect on the expiry of a five-year period of non-use.

The Supreme Court rejected the appeal filed against this decision.

It thus rejected the appellant’s argument that, in order to assess the merits of a cancellation action filed against a national trademark whose seniority was claimed, it was appropriate to treat that trademark as if it were still in force and therefore to take into account the use begun or resumed in the 5 years preceding the introduction of the court action. Thus, the Court of Appeal should have taken into account the resumption of use made through the European trademark, the use of a European trademark also being equivalent to use of a French trademark for an identical sign, knowing, moreover, that under the 1964 law, cancellation could only take effect on the date of introduction of the court action.

The Supreme Court referred, on the other hand, to the judgment of 19 April 2018 (C-148/17) of the Court of Justice of the European Union that ruled that the conditions for the invalidity or lapse of a trademark whose seniority is claimed to be concluded do not have to be met cumulatively on the date on which the national trade mark was abandoned, as well as on the date on which the court  rules on the non-use. It further noted that the appellant had not been able to prove any use of his national trade mark.

Thus, the use of a European trademark does not save from forfeiture the national registration whose seniority was claimed in the European trademark and which was not used at the time it was abandoned as a national registration.

This decision can only encourage holders of national rights not to abandon them, and contradicts the idea that the claim of seniority in a European trademark would allow the abandonment of the corresponding national trademarks, cost-saving measures or a simplification of their portfolios…

In Brief: In a judgment C-310/17 of 13 November 2018, the European Court of Justice of the European Union refused to accept that a food flavor could qualify as a “work”. This precludes copyright protection and opposes the possibility that national legislation could provide for such protection (see our previous flash of July 2017).