Hour and minute not relevant to determine filing date

European Union
Advocate General Niilo Jääskinen has issued his opinion in Génesis Seguros Generales Sociedad Anónima de Seguros y Reaseguros v Boys Toys SA (Case C-190/20, March 31 2011), a reference for a preliminary ruling from the Spanish Tribunal Supremo on the interpretation of the concept of ‘date of filing’ of a Community trademark (CTM) application under Article 27 of the Community Trademark Regulation (40/94).
The question was lodged in the context of a contentious administrative proceeding. The Spanish Patents and Trademarks Office registered the trademark RIZO’S (Registration 2.571.979) despite an opposition by Génesis Seguros Generales SA Seguros y Reaseguros. Génesis was the holder of CTM applications for RIZO (Application 3.543.361) and RIZO, EL ERIZO (Application 3.543.386), which had been filed, by electronic means, on the same date as the contested Spanish trademark (December 12 2003), but a few hours earlier.
The Patents and Trademarks Office rejected Génesis’ opposition on the grounds that the marks on which the opposition was based were not prior to the contested mark. Génesis appealed, seeking a declaration of priority of its CTMs. The office, pursuant to Article 27 of the regulation, dismissed the appeal, arguing that Génesis’ CTMs had been filed after the contested Spanish registration, since the required documents were filed on January 7 2004 (ie, later than the initial e-filing).
Génesis appealed to the Tribunal Supremo. The court pointed out that Article 27 of the regulation does not provide any criterion for determining the priority of trademark applications which have been filed on the same day; in contrast, under Spanish law, priority is determined based on the exact time (hour and minute) of the filings.
The court thus referred the following question to the Court of Justice of the European Union for a preliminary ruling: may Article 27 be interpreted in such a way as to enable to take into account not only the day, but also the hour and minute of filing of an application for registration of a CTM, for the purposes of establishing temporary priority over a national trademark filed on the same day, where the national legislation governing the registration of national trademarks considers the time of filing to be relevant?
The advocate general found that, in the current state of EU law, the question had to be answered in the negative.
First, the advocate general pointed out that, under the Paris Convention for the Protection of Industrial Property, to which all EU member states are contracting parties, the date of filing for the purposes of determining priority is understood as a calendar day, the hour and minute being irrelevant. Moreover, the Community Trademark Regulation contains provisions, such as Article 29, which follow the priority system set forth by the Paris Convention. Thus, it would be unreasonable to take into account the hour and minute of the filing in order to determine priority.
According to the advocate general, the wording of Article 27 confirmed this interpretation, since it refers only to the “date”. Furthermore, under Rule 5 of the Community Trademark Implementation Regulation (2868/95), OHIM must mark the documents making up the application with the date of receipt and file number, but not the filing time.
Second, the purpose (ie, to create an industrial property right with a unitary character and with equal effect throughout the Community) and autonomous nature of EU trademark law led to the same conclusion. Therefore, the legal solutions adopted in the different member states could not be taken into account to interpret the CTM regime, and the applicability of national law was limited to issues that are not excluded from the scope of the Community Trademark Regulation.
Third, the advocate general referred to Article 32 of the regulation, pursuant to which a CTM application “which has been accorded a date of filing shall, in the member states, be equivalent to a regular national filing”. This provision refers solely to the “date” and does not modify the Community concept of ‘filing date’, nor does it imply a subsidiary application of national legislations.
Finally, the advocate general pointed out the obvious practical difficulties that could arise if priority was to be determined based on the exact time of the filing. For example, the fact that there are four different time zones in the European Union, or that there are differences between the means of communication available in each member state, would make it difficult to determine the exact time of filing.
However, the advocate general recognised that, if the hour and minute of the filing are not taken into account and two conflicting marks have been filed on the same day, the marks may have to coexist. Although it is not a desirable situation, the coexistence of identical or similar trademarks is not an unknown phenomenon in the European Union; this results from the multinational and diverse character of the trademark protection systems.  
Carlota Viola, Grau & Angulo, Barcelona

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