Seniority of a national trademark

Any owner of a trademark registered in a member state of the EU may claim the seniority of his national trademark in 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.

This looks like a good opportunity to save costs and simplify trademark portfolios. However, such seniority expires if the national mark lapses, with effect before the filing (or priority) date of the European trademark (article 39 of Regulation [EU] 2017/1001).

These provisions should be read in conjunction with 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 the trademark lapsed.

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

Case study

In this case, SCEV Champagne Gallo, which was created on April 8, 2002, was using Gallo as its corporate name to market champagne. Upon being sued for trademark infringement by the owner of 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 had been filed later than its corporate name.

The Paris Court of Appeal, the decision of which was contested before the Supreme Court, had noted that the French trademark had never been used. Its cancellation was ordered with effect from August 30, 1973, which is five years after the publication of its original registration.

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 five years preceding the introduction of the court action in cancellation.

According to the appellant, the Court of Appeal should have taken into account the resumption of use made through the European trademark, the use of a European trademark being equivalent to use of a French trademark for an identical sign.

However, the Supreme Court referred to the judgment of April 19, 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 trademark 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 trademark.

Thus, the use of a European trademark did 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.

In conclusion, 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.