ECJ confirms that hour and minute are irrelevant to determine priority

European Union

In Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros (Génesis) v Boys Toys SA (Case C-190/10, March 22 2012), the Court of Justice of the European Union (ECJ) has held that the hour and minute of filing of a Community trademark (CTM) application are irrelevant for the purpose of establishing the CTM’s priority over a national trademark filed on the same day, but a few hours later. The decision followed the opinion issued by Advocate General Niilo Jääskinen on March 31 2011.

The Spanish High Court (Tribunal Supremo) referred a question to the ECJ for a preliminary ruling within the context of a dispute between Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros (Génesis) and Boys Toys SA.

Génesis was the holder of two CTM applications for RIZO and RIZO, EL ERIZO, filed on December 12 2003. It opposed the registration of the Spanish trademark RIZO, filed by Boys Toys also on December 12 2003, but a few hours later.

The dispute stemmed from the discrepancy between the Spanish Trademark Act (Ley de Marcas) and the EU legislation with regard to the definition of ‘filing date’: while Articles 11 and 13 of the Trademark Act states that “the day, hour and minute” constitute the filing date, Article 27 of the Community Trademark Regulation (40/94) mentions only “the date”.  

The Spanish High Court thus sought to ascertain whether the hour and minute of filing of a CTM were relevant to establish priority over a national trademark, where the national law governing that trademark takes into consideration the hour and minute of filing.

The ECJ first pointed out that the First Trademarks Directive (89/104/EEC) does not contain any provisions relating to the interpretation of the concept of ‘filing date’ with regard to national trademark applications; therefore, this concept is not harmonised and may differ from one member state to another. The ECJ also reiterated that the CTM regime is an autonomous system that applies independently of any national system.

The ECJ then turned to the interpretation of the concept of ‘filing date’ under Article 27 of Regulation 40/94, and concluded that the provision requires the calendar day to be taken into account, but not the hour and minute. This finding was based on the following grounds:

  • Although the various versions of Article 27 in the different languages of the European Union show certain differences (“day of filing”, “day” or “date of filing”, depending on the country), the ordinary meaning of the term ‘date’ simply refers to a certain day of a given month of a given year, but does not refer to the specific hour and minute.
  • Rule 5 of the Community Trademark Implementation Regulation (2868/95) establishes an obligation to indicate the date of the application, but not the hour and minute. If the EU legislature had considered that Article 27 of Regulation 40/94 should be construed as including the hour and minute, this would have been included in Rule 5 of Regulation 2868/1995.
  • The fact that the hour and minute is recorded when an application is filed by electronic means is irrelevant, since an application can also be filed by non-electronic means.

The ECJ concluded that, under EU Law, the hour and minute should not be taken into account for the purpose of establishing the priority of a CTM over a national trademark filed on the same day where, according to the national legislation governing the national trademark, the hour and minute of filing are relevant in that regard. The ECJ recalled that the CTM system is an autonomous regime: if the date of filing of a CTM application were to be established by taking account of provisions of national law, this would undermine the uniform nature of the protection derived from a CTM.

Miguel Gil, Grau & Angulo, Madrid

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