Case T‑32/21
(Publication in extract form)
Daw SE
v
European Union Intellectual Property Office
Judgment of the General Court (Second Chamber), 6 October 2021
(EU trade mark – EU word mark Muresko – Earlier national word marks Muresko – Claiming seniority of the earlier national marks after registration of the EU mark – Articles 39 and 40 of Regulation (EU) 2017/1001 – Registration of earlier national marks which have expired by the date of the claim)
1. EU law – Interpretation – Methods – Literal, systematic and teleological interpretation
(see paragraph 22)
2. EU trade mark – Filing of the application for registration of an EU trade mark – Claiming seniority of the national mark – Requirements – Restrictive interpretation
(European Parliament and Council Regulation 2017/1001, Arts 39 and 40)
(see paragraph 23)
3. EU trade mark – Filing of the application for an EU trade mark – Claiming seniority of the national mark – Claiming after registration of the EU trade mark – Requirements – National trade mark registered at the time the claim is filed
(European Parliament and Council Regulation 2017/1001, recital 12 and Arts 39 and 40)
(see paragraphs 25, 27, 28, 30-34, 40)
Résumé
The applicant, Daw SE, is the proprietor of the EU word mark Muresko, which was registered on 12 September 2016 by the European Union Intellectual Property Office (EUIPO).
On 3 February 2020, with regard to that trade mark, the applicant brought before EUIPO a seniority claim in respect of identical Polish and German marks, in accordance with Article 40 of Regulation 2017/1001. (1) The applicant did not dispute that the registration of those national trade marks had expired, but relied on the fact that a seniority claim in respect of those marks had been accepted for another EU trade mark.
EUIPO rejected the contested claim on the ground that the registration of the national marks had expired at the time that claim was filed.
The General Court dismisses the action for annulment of EUIPO’s decision. It finds, for the first time, that an earlier national mark must be registered and in force on the date on which the seniority of that mark is claimed for an identical EU trade mark.
Findings of the Court
In the first place, the Court adopts a literal interpretation of Article 40 of Regulation 2017/1001. It concludes that, taking into account the various language versions, the wording of that article clearly states that the identical earlier national mark, the seniority of which is claimed for the EU trade mark, must be registered at the time the seniority claim is filed.
In the second place, the Court states that that interpretation is confirmed by the context of that article. (2) Once the seniority claim based on the identical earlier national mark has been accepted for the EU trade mark, the proprietor may let the first mark expire, while continuing to enjoy the same rights under the second mark as those which he or she would have had if the first trade mark had continued to be registered. Thus, the system of claiming seniority of a national trade mark following registration of an EU trade mark is based on the principle that the proprietor of the earlier national mark will not surrender that mark or allow it to lapse before the seniority claim which he or she has filed has been accepted for the EU trade mark. This is based on the premiss that, at the date on which that claim is filed, the registration of the identical earlier national mark has not already expired.
In the third place, that interpretation is also consistent with the aim of the system of claiming seniority, which is to enable the proprietors of national trade marks and identical EU trade marks to streamline their trade mark portfolios while maintaining their earlier rights. The presumption that the rights attached to an identical earlier national mark will be maintained, which must be interpreted narrowly, is not to be applied generally, but only in favour of an identical EU trade mark and in respect of identical goods or services for which the seniority claim has been accepted and in the event of non-renewal of the registration of the identical earlier national mark. A seniority claim which has been accepted does not therefore have the effect of ensuring the survival of the earlier national mark concerned or even of merely maintaining certain rights attached to it separately from the EU trade mark for the benefit of which that claim was accepted.
Therefore, although the applicant may rely on the presumption that the rights attached to the earlier Polish and German trade marks would be maintained after their expiry, for the benefit of another EU trade mark for which the seniority claim had been accepted before their expiry, it cannot, nevertheless, rely on that same presumption in support of the contested seniority claim for the EU trade mark at issue.