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Precise time of Community trade mark applications not relevant to priority right, even if national laws say it is, ECJ says

The precise time that applications are filed for Community trade marks (CTMs) is irrelevant when assessing whether the applicant has a priority right to restrict others registering the same mark nationally elsewhere in the EU, the European Court of Justice (ECJ) has ruled.30 Mar 2012

Only the day is relevant in determining when CTMs are said to have been filed, even if the time of that filing is considered relevant for determining priority rights by member states' national legislation, it said.

Under the EU's CTM Regulation "a person who has duly filed an application for a trade mark ... shall enjoy, for the purpose of filing a Community trade mark application for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed, a right of priority during a period of six months from the date of filing of the first application"

"European Union law precludes the hour and minute of the filing of an application for a Community trade mark from being taken into account under national law for the purposes of establishing that Community trade mark’s priority over a national trade mark filed on the same day, where the national legislation governing the registration of national trade marks considers the hour and minute of filing to be relevant in that regard," the ECJ said in its ruling

The ECJ was considering a case referred to it from a court in Spain which is trying to determine the outcome of a dispute over the timings of trade mark applications.

In the dispute Génesis contends that it filed a CTM application for the trade marks 'Rizo' and 'Rizo, El Erizo' electronically at 11:52am and 12:13pm on 12 December 2003. The company has opposed the registration by Pool Angel Tomás SL of the 'Rizo’s' national trade mark by the registry in Spain which was applied for at 17:45pm on the same day.

Spanish trade mark laws determine that the "time" of applications is a factor in determining the "date of filing" of applications.

However, in the dispute the High Court of Justice in Madrid previously upheld a decision by the Spanish trade mark registry that Génesis' application had not actually been made until 7 January 2004. That is because that was the date the company actually "submitted" the application rather than merely "filed" it, it had ruled.

Under the CTM Regulation an application for a Community trade mark is said to have been made on the date that certain documents setting out details of the request, including a "representation" of the mark and what goods or services the applicant wants it to cover, are filed.

Those documents can be submitted to the Office for Harmonisation in the Internal Market (OHIM) or other trade mark registries in EU member states. The application is only said to have been made on that date if the applicant has paid their "application fee within ... one month of filing the ... documents."

The ECJ said that EU trade mark laws allow member states to set their own procedural rules to determine when national trade mark applications are said to have been made. This means Spain can legitimately choose to determine priority of applications for national marks according to the precise time of submissions and can choose to determine the "date of filing" as being the date the application is actually submitted rather than just filed.

However, the rules for determining the date of filing of CTMs are different as a result of how the word 'date' should be read in the legislation, the ECJ said.

"According to its ordinary meaning, the term ‘date’ generally designates the day of the month, the month and the year when an act has been adopted or an event has taken place," the ECJ said. "In the same way, stating the day when an act has been adopted or an event has taken place means, according to its ordinary meaning, that it is also necessary to state the month and the year."

"However, an obligation to state the date or the day does not imply, according to the ordinary meaning, that it is necessary to state the hour and ... the minute. Therefore, in the absence of any express reference in [the EU's Community Trade Mark Regulation] to the hour and minute of filing of a Community trade mark application, it is apparent that that information was not considered by the Community legislature to be necessary for the purposes of establishing the time of filing of a Community trade mark application and hence its priority over another trade mark application," it said.

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