Businesses operating in the European Union may be familiar with the concept of “seniority.”  By claiming seniority, an owner of an EU trademark registration may be able to claim prior rights based on existing national trademark registrations in EU member countries.  To illustrate when a business might claim seniority, take the following example:

• In 2008, a company files a trademark application in France.

• In 2010, the same company files a trademark application in the EU for the same mark and same goods.

• When it comes time to renew its French registration, the company realizes that it owns somewhat duplicative rights:  trademark registrations for the same mark in both the EU and France, an EU member country.

• The company attaches a seniority claim to its EU registration, based on the earlier French registration.

• If the seniority claim is accepted, the company’s EU registration should be entitled to the same scope of protection in France as the company’s former French registration.

• The company lets its French registration lapse, and thus maintains only one registration going forward.

Of course, there are many factors to consider before allowing national rights to lapse.  Under certain circumstances, however, claiming seniority can help businesses streamline their global portfolios and save on maintenance costs.

In view of recent developments, we thought it might be a good time to check in with our friends in the EU.  The below comments from Andy Clemson of the EU law firm Cleveland Scott York might make you think twice about when – and even whether – to claim seniority.  Because we’re lawyers, we have to mention that Cleveland Scott York is not affiliated with Drinker Biddle & Reath LLP, and the views expressed below are those of Cleveland Scott York, and not necessarily those of Drinker Biddle & Reath LLP or its clients. The below responses have been edited for brevity.

1. Last year, the Court of Justice of the European Union issued a decision on the topic of seniority claims.  According to the decision, if a national registration could have been cancelled for non-use at the time it was permitted to lapse, then the seniority claim based on that national registration could also be cancelled.  Significantly, subsequent use of the registered EU mark in that country can’t cure the vulnerability of the seniority claim.

   How did this decision change the advice you give trademark owners considering claiming seniority?

   While seniority claims remain a useful option for streamlining portfolios, they will not be appropriate in all cases.

   Before allowing a national registration to lapse, a trademark owner should confirm it has adequate evidence showing that its registered brand is in use. Even if there is no question as to use, it is a good idea to gather and save this evidence in case the trademark owner ever needs to defend the validity of its seniority claim.  For trademark owners who already have seniority claims in place, consider setting aside as much evidence of use as possible now for each relevant EU member country, in the event a seniority claim is challenged in the future. Against this background, many trademark owners may simply prefer to pay the fees to maintain their national registrations and not take the risk that their rights could be challenged in the future.

2. In view of an upcoming potential Brexit date, do you have any advice for a trademark owner who wants to add a seniority claim to an EU registration based on a UK national registration?

   Owners of UK national registrations will be able to claim seniority only until Brexit occurs.  However, such seniority claims will be honored even after Brexit.  For trademark owners interested in claiming seniority based on a UK national registration, it would therefore be prudent to make any seniority claim as soon as possible.